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
Applicant is reminded that terms inside parentheses, such as “(Ni, NiP, NiW)” in claim 4 are not considered.
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.
In claim 1, the prestressing means comprise a secondary flexible blade connected and a lever ([0032]-[0033] of the specification).
In claim 1, the assembly means may be glue ([0022]).
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 1-13 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.
Claim 1 recites “its flexibility” in line 4. Whether this limitation refers to the “predefined flexibility” or the balance-spring’s flexibility is ambiguous. It has been read as -a flexibility of the balance-spring-.
Claim 1 recites “a flexibility less than that of the strip” in lines 7-8. Whether “that” refers to the “predefined flexibility” of the strip or the “additional flexibility” of the strip is ambiguous. “That” has been read as -the predefined flexibility-.
The term “substantially” in claim 1 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, 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. How much the position of the end of the strip can vary without being considered a substantial modification is not specified, so the metes and bounds of this limitation are ambiguous.
Regarding claims 2 and 4, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 5, the phrase "for example" 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).
Claim 6 recites “the first and the elastic element are assembled.” This limitation does not make sense because “the first” is not a structure. The limitation has been read as -the strip and the elastic element are assembled-.
Claim 12 recites “a balance-spring” in line 3. Whether this limitation refers to the balance-spring of claim 1 or a second, heretofore-unmentioned balance-spring is ambiguous. It has been read as -the balance-spring-.
Claim 13 recites “a resonator mechanism” in line 2. Whether this limitation refers to the mechanism of claim 12 or a second, heretofore-unmentioned mechanism is ambiguous. It has been read as -the mechanism -.
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 1 and 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over Helfer (US 2023/0393528) in view of Bornand (US 3,934,406).
Regarding claims 1 and 6, Helfer discloses (Fig. 3) a balance-spring (Fig. 3) for a horological resonator mechanism (title), the balance-spring comprising a flexible strip (2) coiled on itself into several coils, the strip having a predefined flexibility ([0043]), the balance-spring including adjustment means for adjusting its flexibility, the adjustment means including an elastic element (5) arranged in series with the strip (2), the elastic element (5) connecting one end (4) of said strip to a fixed support (17), so as to add an additional flexibility to the strip, the elastic element having a flexibility less than that of the strip ([0046]), the adjustment means including prestressing means (6) to apply a variable force or torque to the elastic element ([0028]), without substantially modifying the position of the end of the strip (the elastic element 5 allows the prestressing means and itself to move without moving the strip), so as to vary only the flexibility of the elastic element ([0062]), characterised in that wherein the elastic element (5) and the strip (2) are separate and assembled with each other (via rigid structure 18).
Helfer does not show the elastic element and strip being assembled by assembly means comprising glue.
Bornand teaches assembling a strip of a balance spring by gluing to a structure (column 1, lines 25-30).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have assembled Helfer’s elastic element and strip by gluing, as suggested by Bornand. One of ordinary skill in the art would have been motivated to make this assembly as a known and predictable solution for securely fastening two structures.
Regarding claim 7, Helfer teaches (Fig. 3) the balance-spring according to claim 1, wherein the elastic element (5) is arranged at an outer end of the strip (2).
Regarding claim 8, Helfer teaches (Fig. 3) the balance-spring according to claim 1, wherein the elastic element (5) comprises a flexible guide provided with at least one flexible blade (11), and with a movable rigid part (18) to which the strip is connected (Fig. 3).
Regarding claim 9, Helfer teaches (Fig. 3) the balance-spring according to claim 1, wherein the torque or force is continuously adjustable by the prestressing means ([0048]).
Regarding claim 10, Helfer teaches (Fig. 3) the balance-spring according to claim 1, wherein the prestressing means (6) comprise a secondary flexible blade (19) connected to the elastic element (5).
Regarding claim 11, Helfer teaches (Fig. 3) the balance-spring according to claim 1, wherein the prestressing means (6) comprise a lever (14) to adjust the variable force/torque ([0051] and [0062]).
Regarding claim 12, Helfer teaches a rotary resonator mechanism ([0003]) for a horological movement ([0014]), including an oscillating mass ([0014]), wherein the mechanism comprises the balance-spring according to claim 1 (claims 14).
Regarding claim 13, Helfer teaches a horological movement, including a plate and the resonator mechanism according to claim 12 ([0040]), wherein the elastic element is assembled with at least one balance-spring stud (abstract).
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Helfer in view of Bornand as applied to claim 1, and further in view of Jeanneret (US 20210109483).
Regarding claims 2 and 4, Helfer in view of Bornand discloses the balance-spring according to claim 1.
The combination of Helfer and Bornand does not show the elastic element being formed from a first material withstanding assembly processes generating stress induced in the first material, the first material being a metal or metal alloy.
Jeanneret teaches an elastic element formed from a first material that is a metal alloy ([0005]: “nickel-phosphorous”) withstanding assembly processes generating stress induced in the first material. The element was formed, therefore it withstood the assembly processes’ generated stress.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted Helfer’s elastic material’s material for Jeanneret’s first material. One of ordinary skill in the art would have been motivated to make this substitution to achieve the predictable result of creating a strong, durable element capable of withstanding mechanical stress ([0005] of Jeanneret).
Regarding claim 3, Helfer in view of Bornand and Jeanneret discloses the balance-spring according to claim 2.
The combination of Helfer, Bornand, and Jeanneret does show the prestressing means being formed from the first material.
Jeanneret teaches an element formed from a first material ([0005]: “nickel-phosphorous”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted Helfer’s prestressing means’ material for Jeanneret’s first material. One of ordinary skill in the art would have been motivated to make this substitution to achieve the predictable result of creating a strong, durable element capable of withstanding mechanical stress ([0005] of Jeanneret).
Regarding claim 5, Helfer teaches the balance-spring according to claim 2, wherein the strip is formed from a second material ([0046]) different from the first material.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Di Domenico (US 20200033804) discloses a method for adjusting the flexibility of an oscillator (title).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew Hwang whose telephone number is (571)272-1191. The examiner can normally be reached M-F.
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/MATTHEW DANIEL HWANG/Examiner, Art Unit 2833
/renee s luebke/Supervisory Patent Examiner
Art Unit 2833
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