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 .
Response to Amendment
The amendments to claims 1-7, 9, and 12 and the addition of claim 15 are acknowledged. These amendments overcome the previous 35 U.S.C. 112(b) rejection of claims 1-2, 4-7, 9, and 12, and these rejections are accordingly withdrawn. The amendment to claim 3 does not overcome the previous 35 U.S.C. 112(b) rejection. The amendment to claim 7 overcomes the previous claim objection of claim 7, and this objection is accordingly withdrawn.
Response to Arguments
Applicant's arguments filed 12/20/25 have been fully considered but they are not persuasive. The amendments to claim 1 require a different rejection than previously applied but the limitations of claim 1 are nonetheless disclosed by Fleury in the embodiment shown in Fig. 5 and described in part in paragraph [0026]. The limitation that one of the stacked and connected disk shaped layers is the control unit is met by printed circuit 38 following the 35 U.S.C. 112(f) claim interpretation of the term control unit.
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 despite absence of “Means”
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.
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 1 recites the limitation “a control unit for managing the operation of said at least one luminous source” (lines 5-6) but does not recite sufficient structure, material, or acts for performing the claimed function. The term “control unit” is a substitute for means and is a generic placeholder for performing the claimed function. Without additional context, a control unit can be electronic or purely mechanical, a sub-part of the overall managing function or the entirety of the device for accomplishing the function. This generic placeholder is modified by functional language linked by the transition word “for” but lacks any details in the claim for 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 found in the following paragraph(s) of the specification:
[0021] In this lighting device 3, the control unit 7, also known as a microcontroller, includes an electronic circuit 8 comprising hardware resources, in particular at least one processor cooperating with memory elements as well as address, data and control buses. This control unit 7 comprises in its memory elements an algorithm for managing the illumination of said at least one luminous source 4. Such an algorithm is executed by the processor of this control unit 7, taking account in particular of data from event sensors comprised in the lighting device 3 in order to manage the operation of said at least one luminous source 4.
Therefore, the limitation “a control unit” is interpreted as requiring an electronic circuit comprising hardware resources, or its equivalent(s), as described in paragraph [0021] but also known by a person having ordinary skill in the art where a microcontroller is described.
Claim Interpretation of “autonomous lighting device”
Claim 1 recites the limitations “A dial for a watch comprising an autonomous lighting device” and “an autonomous power supply unit”. The term “autonomous lighting device” is not well understood term in the art to which a person having ordinary skill in the art would recognize beyond the limitation requiring a lighting device that is autonomous in some regard.
Applicants need not confine themselves to the terminology used in the prior art, but are required to make clear and precise the terms that are used to define the invention whereby the metes and bounds of the claimed invention can be ascertained. In interpreting the meaning of “autonomous” as used in claim 1, the specification provides the following context:
[0015] With reference to Figures 2 and 4, such a dial 2a, 2b comprises an autonomous lighting device 3. This lighting device 3 has its own electrical power supply, as will be seen later. Such a lighting device 3 is said to be autonomous in particular with respect to the movement of the watch 1 and in particular with respect to the energy source of this movement, for example when this source is an electrical power supply as in an electronic movement or an electromechanical movement. Under these conditions, it is understood that the energy used by this lighting device 3 is not to the detriment of the autonomy of the movement.
In light of the specification providing context for how to interpret “autonomous” when used in claim 1, it shall be interpreted that “autonomous lighting device” requires a lighting device autonomous in power with respect to the movement of the watch and the energy of the movement. A timepiece that includes a single energy source for both the movement and a lighting device would therefore not meet the limitations of claim 1.
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.
Claims 10 and 11 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 Claim 10, it recites the limitation “wherein the assembly includes a fourth layer forming a hidden face of the dial comprising the control unit” and depends from claim 1 which recites the limitation “wherein one of the stacked and connected disk shaped layers is the control unit”. As presently claimed following the amendments to claim 1, claim 10 requires both “one of the stacked and connected disk shaped layers” and “a fourth layer” to include/comprise the control unit. Because claim 10 introduces the fourth layer, instead of referring back to claim 1 with antecedent basis, it requires two different layers each having the control unit and there is insufficient written description in the specification or drawings to support a dial meeting this limitation.
Regarding Claim 11, it recites the limitation “wherein the assembly includes a third comprising a hidden face of the dial including the control unit” and depends from claim 1 which recites the limitation “wherein one of the stacked and connected disk shaped layers is the control unit”. As presently claimed following the amendments to claim 1, claim 11 requires both “one of the stacked and connected disk shaped layers” and “a third layer” to be/comprise the control unit. Because claim 11 introduces the third layer, instead of referring back to claim 1 with antecedent basis, it requires two different layers each having the control unit and there is insufficient written description in the specification or drawings to support a dial meeting this limitation.
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.
Claims 3, 6-7, 9, and 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 3, it recites the limitation “in particular solar radiation.” (lines 2-3) and the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination this limitation will not be treated as a required element until it is definitely claimed as part of the invention.
Regarding Claim 6, it recites the limitation “a photovoltaic module” and it is not clear whether this is the same “photovoltaic module” as that introduced in claim 5 or a separate limitation. Either proper use of antecedent basis or a clear distinction between these limitations is required.
Regarding Claim 7, it recites the limitation “a photovoltaic module” and it is not clear whether this is the same “photovoltaic module” as that introduced in claim 5 or a separate limitation. Either proper use of antecedent basis or a clear distinction between these limitations is required.
Regarding Claim 9, it recites the limitation “a third layer” and it is not clear whether this is the same “third layer” as that introduced in claim 8 or a separate limitation. Either proper use of antecedent basis or a clear distinction between these limitations is required.
Regarding Claim 12, it recites the limitation “the other layers” and there is insufficient antecedent basis for this limitation in the claim. The relationship between the first layer and the plurality of individual disk shaped layers is not clear enough for the other layers to reference the plurality of individual disk shaped layers as the first layer is not described as part of the plurality of individual disk shaped layers.
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 1-3, 8-11 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fleury et al. (US 20120120776 A1, hereinafter “Fleury”).
Regarding Claim 1, Fleury discloses a dial (4) for a watch comprising an autonomous lighting device [0017] comprising the following functional elements:
at least one luminous source (20),
an autonomous power supply unit (18), and
a control unit (38) [fig. 5] for managing the operation of said at least one luminous source [0026] (printed circuit meets means plus function claim interpretation),
wherein said dial is comprised of an assembly of a plurality of individual disk shaped layers (18, 38) [figs. 7-10 demonstrate disk shape]that are stacked and connected together [fig. 5] , and
wherein each of the individual layers includes one or more functional elements of the autonomous lighting device (layer 38 includes the control unit, layer 18 includes the luminous source and autonomous power supply), and
wherein one of the stacked and connected disk shaped layers is the control unit (38) [fig. 5].
Regarding Claim 2, Fleury discloses the dial according to claim 1, and further discloses that the assembly includes a first layer (18) forming a visible face of the dial comprising the at least one luminous source (20).
Regarding Claim 3, Fleury discloses the dial according to claim 2, wherein said first layer is configured to be traversed in whole or in part by light radiation, in particular solar radiation (in part, photovoltaic cells do not capture all solar radiation and some forms of solar radiation pass through).
Regarding Claim 8, Fleury discloses the dial according to claim 1, and further discloses that the assembly includes a third layer (24) comprising an electrical energy accumulator constituting the autonomous electrical power supply unit.
Regarding Claim 9, Fleury discloses the dial according to claim 8, and further discloses that the assembly includes a third layer comprising a substrate (38) on which the electrical energy accumulator is printed (18) [0026].
Regarding Claim 10, Fleury discloses the dial according to claim 1, and further discloses that the assembly includes a fourth layer (38) forming a hidden face of the dial [fig. 5] comprising the control unit [0026].
Regarding Claim 11, Fleury discloses the dial according to claim 1, and further discloses that the assembly includes a third layer (38) [fig. 5] comprising a hidden face of the dial including the control unit (38) [0026] and an electrical energy accumulator (24) constituting the autonomous electrical power supply unit.
Regarding Claim 13, Fleury discloses the dial according to claim 1, and further discloses a watch [abstract] comprising a dial according to claim 1.
Regarding Claim 14, Fleury discloses the watch according to claim 13, and further discloses that the watch comprises a mechanical or electromechanical or electronic horological movement (2) [0017-0018].
Regarding Claim 15, Fleury discloses the dial according to claim 2, wherein said first layer is configured to be traversed in whole or in part by solar radiation (in part, photovoltaic cells do not capture all solar radiation and some forms of solar radiation pass through).
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.
Claims 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Fleury as applied to claim 2 above, and further in view of Konda et al. (JP 2015052520 A, hereinafter “Konda”).
Regarding Claim 4, Fleury discloses the dial according to claim 2, but does not disclose that said first layer is wholly or partly transparent or translucent.
Konda discloses a dial for a timepiece including a top layer (5) that is a light permeable dial plate, a middle layer (4) including the light permeable sheet 13 [fig. 4], and a bottom layer constituting a solar panel layer (3).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, from the disclosure of Konda that the light source of Fleury may take the form of a separate layer with partial transparency (making it the first layer) above the photovoltaic supply layer instead of within this layer, below an additional transparent dial plate, and in doing so this would provide a different and more even light distribution over the dial and allow for the appearance of the dial to be different than just what is visible on the photovoltaic layer while light would still be able to reach and power the photovoltaic layer.
Regarding Claim 5, Fleury discloses the dial according to claim 2, and further discloses
that the assembly includes a layer (18) comprising a photovoltaic module constituting the autonomous electrical power supply unit [0026]. However, as used in the rejection of claim 2 above this second layer is the same as the first layer (18). Therefore, Fleury does not disclose both the limitations of the first layer and the second layer in the same embodiment.
Konda discloses a dial for a timepiece including a top layer (5) that is a light permeable dial plate, a middle layer (4) including the light permeable sheet 13 [fig. 4], and a bottom layer constituting a solar panel layer (3).
It would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, from the disclosure of Konda that the light source of Fleury may take the form of a separate layer with partial transparency (making it the first layer, and the layer 18 of Fleury the second layer) above the photovoltaic supply layer instead of within this layer, below an additional transparent dial plate, and in doing so this would provide a different and more even light distribution over the dial and allow for the appearance of the dial to be different than just what is visible on the photovoltaic layer while light would still be able to reach and power the photovoltaic layer.
Regarding Claim 6, Fleury and Konda disclose the dial according to claim 5, and Fleury further discloses that the second layer (18) comprises a substrate (38) on which a photovoltaic module is printed.
Regarding Claim 7, Fleury and Konda disclose the dial according to claim 5, and Fleury further discloses wherein said the second layer (18) comprises a substrate (38) on which a photovoltaic module is disposed on an active area of said second layer, said area being configured to receive light rays from the first layer of the assembly as provided by the first (5) and middle layer (4) of Konda.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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