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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/27/2026 has been entered.
Drawings
The drawings were received on 05/27/2029. These drawings are acceptable.
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.
Claim 9 is 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 limitation “the direction” in line 7 lacks antecedent basis.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 5, 8, 9, 11 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4 and 6 of copending Application No. 18/501,485 in view of Roach et al. [Roach hereinafter, US 11,194,298]. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims include the claimed subject matter of the present claims, except for what is detailed below.
In regard to claims 1, 2, 5, 8, 9, 11 and 12, claims 1, 3, 4 and 6 of ‘485 disclose the claimed invention [the difference in language is semantics] except for a stop member that abuts the switch and against which the striker element comes to bear when the striker element drives the switch into the connected state or into the rest state, wherein the striker element is provided with an axial protrusion extending from a bearing surface with which the striker element forms a shoulder, the striker element being configured so that when striker element drives the switch into the connected state or into the rest state, the axial protrusion applies pressure to the switch and the bearing surface rests in abutment against the stop member, and wherein the stop member is arranged in a continuation of a direction of travel of the push-button against one of the connection terminals.
Roach teaches [in Fig. 2] a stop member [222] that abuts the switch [216] and against which the striker element [210] comes to bear when the striker element [210] drives the switch [216] into the connected state or into the rest state, wherein the striker element [210] is provided with an axial protrusion extending from a bearing surface with which the striker element [210] forms a shoulder, the striker element [210] being configured so that when striker element [210] drives the switch [216] into the connected state or into the rest state, the axial protrusion applies pressure to the switch [216] and the bearing surface rests in abutment against the stop member [222], and wherein the stop member [222] is arranged in a continuation of a direction of travel of the push-button [204, 210] against one of the connection terminals [in 216]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the stop member and axial protrusion of Roach with the apparatus of ‘485 in order to actuate the switch as desired.
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.
Claims 1, 2, 5, 6, 8, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roach et al. [Roach hereinafter, US 11,194,298].
In regard to claim 1, Roach discloses [in Fig. 2] a control module for an electronic device, comprising: a push-button [204, 210] including a striker element [210]; a switch [216] adapted to occupy a connected state and a rest state, said striker element [210] being configured to contact the switch and drive the switch [216] into the connected state or into the rest state when the push-button [204, 210] is operated; and a stop member [222] that abuts the switch [216] and against which the striker element [210] comes to bear when the striker [210] drives the switch [216] into the connected state or into the rest state.
In regard to claim 2, Roach discloses [in Fig. 2] the control module according to claim 1, wherein the striker element [210] is provided with an axial protrusion extending from a bearing surface with which the striker element [210] forms a shoulder, the striker element [210] being configured so that when the striker element [210] drives the switch [216] into the connected state or into the rest state, the axial protrusion applies pressure to the switch [216] and the bearing surface rests in abutment against the stop member [222].
In regard to claim 5, Roach discloses [in Fig. 2] the control module according to claim 1, further comprising a damper [224] configured to absorb part of forces at play by deforming when the striker element [210] drives the switch [216] into the connected state or into the rest state, at least when said forces are greater than a predetermined threshold.
In regard to claim 6, Roach discloses [in Fig. 2] the control module according to claim 5, wherein the damper [224] is arranged on a bearing surface of the striker element [210] so as to be compressed when the striker element [210] drives the switch [216] into the connected state or into the rest state.
In regard to claim 8, Roach discloses [in Fig. 2] the control module according to claim 5, wherein the damper [224] is arranged between a structure of the horological movement and the switch [216], in a continuation of a direction of travel of the push-button [204, 210].
In regard to claim 12, Roach discloses [in Figs. 1 and 2] a watch comprising: a case [201] in which an electronic horological movement is housed, and the control module according to claim 1, wherein the push-button [204, 210] is engaged through a middle of the case [201], and the switch [216] and the stop member [222] are attached to a structure of the electronic horological movement.
In regard to claims 13 and 14, Roach discloses [in Figs. 1 and 2] a control module for an electronic device, comprising: a push-button [204, 210] including a striker element [210]; a switch [216] adapted to occupy a connected state and a rest state, said striker element [210] being configured to drive the switch [216] into the connected state or into the rest state when the push-button [204,210] is operated; a stop member [222] that abuts the switch [216] and against which the striker element [210] comes to bear when the striker element [210] drives the switch [216] into the connected state or into the rest state; and a damper [22] arranged on a bearing face of the striker element [210] and configured to absorb part of forces at play by deforming when the striker element [210] drives the switch [216] into the connected state or into the rest state, at least when said forces are greater than a predetermined threshold, wherein the striker element [210] is provided with an axial protrusion extending from the bearing surface that forms a shoulder, the striker element [210] being configured so that when the striker element [210] drives the switch [216] into the connected state or into the rest state, the axial protrusion applies pressure to the switch [216] and the bearing surface rests in abutment against the stop member [222].
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 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Roach et al. [Roach hereinafter, US 11,194,298] in view of Nakase et al. [Nakase hereinafter, US 8,952,282]. Roach discloses [in Fig. 2] the control module according to claim 1, wherein the stop member [222] is arranged in a continuation of a direction of travel of the push-button [204, 210] against one of the connection terminals [in 216], wherein the striker element [210] comprises a body of substantially cylindrical shape having a radial dimension extending in a direction orthogonal to the direction of movement of the push-button [204, 210], said radial dimension being smaller than an outside diameter of an end of a guide tube [between 212 and the sidewall of 201] at which the striker element [210] is arranged. Roach does not disclose that the switch comprises a frame to which a resilient blade and connection terminals are attached, the resilient blade being moved into a connecting position in which the resilient blade generates contact between the connection terminals, when the switch is in the connection state, and being moved into a rest state in which it prevents any contact between the connection terminals, when the switch is in the rest state. Nakase teaches [in Fig. 2] that the switch comprises a frame [12] to which a resilient blade [32] and connection terminals [21, 22] are attached, the resilient blade [32] being moved into a connecting position in which the resilient blade [32] generates contact between the connection terminals [21, 22], when the switch is in the connection state, and being moved into a rest state in which the resilient blade [32] prevents any contact between the connection terminals [21, 22], when the switch is in the rest state. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to replace the switch of Mau with the switch of Nakase, since it is a well-known and widely used switch in the art that is also actuated by a striker element.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Roach et al. [Roach hereinafter, US 11,194,298] in view of Sakurazawa et al. [Sakurazawa hereinafter, US 9,336,967]. Roach discloses [in Fig. 2] the control module according to claim 1, wherein the push-button [204, 210] comprises a push-button head [204] to which is connected a push-button rod [206] slidably engaged in a guide tube [in 201] and comprising a free end to which the striker element [210] is attached. Roach does not teach that the push-button comprises a spring inserted between the push-button head and the guide tube so as to force the push-button to move towards a rest position. Sakurazawa teaches [in Fig. 2] that the push-button [16] comprises a spring [27] inserted between the push-button head [23] and the guide tube [in 3] so as to force the push-button [16] to move towards a rest position. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the spring of Sakurazawa with the control module of Roach in order to force the push button head to protrude toward the outside of the case [col. 5, lines 55-56] for actuation by a user.
Allowable Subject Matter
Claims 3, 4, 7, and 15-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In regard to claim 15, in combination with other limitations, the stop member taking a form of a wall attached to the switch and comprising a through-hole intended to receive the axial protrusion of the push-button when the striker element drives the switch into the connected state or into the rest state is neither disclosed nor suggested by the prior art.
In regard to claim 17, in combination with other limitations, the damper taking a form of a washer made of an elastically deformable material arranged around the axial protrusion is neither disclosed nor suggested by the prior art.
Response to Arguments
Applicant's arguments filed 05/27/2026 have been fully considered but they are not persuasive. In regard to claim 1, Applicant argues that “the optical encoder component 210 (alleged striker element) does not contact the switch 216 (alleged switch).” The Examiner disagrees. Roach clearly discloses [in Fig. 2] that the striker element [210] indirectly contacts the switch [216] via [222] during actuation. In regard to claims 5, 6 and13, Applicant argues that “Roach does not teach or suggest that the support legs 224 (alleged damper) are arranged on a bearing face of the optical encoder component 210 (alleged striker element).” The Examiner disagrees. Roach clearly discloses [in Fig. 2] that in the assembled state, the damper [224] is arranged on a bearing surface of the striker element.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LHEIREN MAE A CAROC whose telephone number is (571)272-2730. The examiner can normally be reached Monday-Friday, 9:00am-5:00pm.
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/LHEIREN MAE A CAROC/Primary Examiner, Art Unit 2831
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