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 .
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 1-3 and 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-7, and 10-11 of copending Application No. 18/535,250.
Regarding claims 1 and 9, co-pending claim 1 includes all the limitations except for semantic differences. Namely, variable luminosity crystal (“crystal including a device for dynamically varying the brightness”).
Regarding claims 2 and 8, co-pending claim 7 includes all the limitations except for semantic differences.
Regarding claim 3, co-pending claim 6 includes all the limitations except for semantic differences.
Regarding claim 10, co-pending claim 10 includes the same limitations.
Regarding claim 11, co-pending claim 11 includes the same limitations.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 copending Application No. 18/535,250 in view of Land et al. (US 20140132158).
Regarding claim 7, co-pending claim 1 includes the same limitations except for the event being a variation in luminosity in the outer environment. Land teaches an event sensor detecting luminosity variations in the outer environment of a housing (abstract). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ‘250’s event sensor to detect events that vary the outer environment’s luminosity. One of ordinary skill in the art would have been motivated to make this modification to create a system that will brighten or dim in response to the outer environment’s luminosity.
Claims 1, 2-5, 7-8, and 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 7-9, and 12-13 of copending Application No. 18/538,045 in view of Suenaga (US 20190304399).
Regarding claim 1, co-pending claim 1 includes all of the limitations of claim 1 except for semantic differences; the display device being capable of displaying information relating to time indications or to functions implemented by the watch; and a control unit configured to control the contrast of said display device of the watch.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified ‘045’s watch display interface to be capable of displaying information relating to time indications or to functions implemented by the watch. One of ordinary skill in the art would have been motivated to make this modification to realize the purpose of the watch.
Suenaga teaches (Figs. 2, 3) crystal (CG) of variable luminosity (24, 18) and a control unit (11A-11B) that controls the crystal to control the contrast of a watch’s display device ([0125]). Changing a light source’s luminance changes the contrast of the object the light source shines on.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Suenaga’s control unit with ‘045’s crystal. One of ordinary skill in the art would have been motivated to make this combination to create a watch that adapts to different lighting conditions to maintain visual clarity.
Regarding claims 2 and 8, co-pending claim 9 includes the same limitations except for semantic differences.
Regarding claim 3, co-pending claim 8 includes the same limitations except for semantic differences.
Regarding claims 4-5, co-pending claim 4 claims a crystal comprising a transparent substrate (“an assembly comprising…transparent material”) and a luminosity variation element (“illumination generation element”). Co-pending claim 4 does not explicitly claim that the luminosity variation element is on a lower surface of the substrate or comprised in the body of the substrate.
Co-pending claim 4 recites an “outer layer of transparent material” and “an inner layer of transparent material.” Accordingly, one of ordinary skill in the art would recognize that the luminosity variation element must be on one side of the outer layer and may therefore be considered on a lower surface without loss of generality. Also, as part of the assembly, the luminosity variation element partially forms the body and is therefore comprised in the body.
Regarding claim 7, co-pending claim 7 includes the same limitations except for the event being an event that causes a luminosity variation outside the Dewar device. Suenaga teaches a luminosity detecting events that changes in ambient luminosity ([0125]-[0126] and abstract). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Suenaga’s sensing of outside environment events with ‘045’s event sensor. One of ordinary skill in the art would have been motivated to make this combination to create a device that adapts to different lighting conditions to maintain visual clarity.
Regarding claim 10, co-pending claim 12 recites the same limitations.
Regarding claim 11, co-pending claim 13 recites the same limitations.
These are provisional nonstatutory double patenting rejections.
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 7 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.
Claim 7 lacks antecedent basis for “the outer environment.” The limitation has been read as -an outer environment-.
Response to Arguments
The provisional double patenting rejections still stand and the claim amendments filed 2026-01-15 have resolved all rejections under 35 U.S.C. 112 except for the current claim 7 rejection.
Conclusion
THIS ACTION IS MADE FINAL. 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 Matthew Hwang whose telephone number is (571)272-1191. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Luebke can be reached at 571-272-2009. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW DANIEL HWANG/Examiner, Art Unit 2833
/EDWIN A. LEON/Primary Examiner, Art Unit 2833