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 Objections
Claim 15 is objected to because of the following informalities: “putting the timepiece in beat comprising an operation” is idiomatically incorrect and is suggested to be changed to -putting the timepiece in beat through an operation-. Appropriate correction is required.
Claim Interpretation
For the purposes of examination, the term “hairspring” is understood to mean a spiral spring with multiple loops. This interpretation is based on the specification, which refers to element 3 in Figs. 4-7 and 9 as a hairspring; element 3 in Fig. 2 as a straight elastic blade; and element 3 in Figs. 3 and 9 as a curved elastic blade. See [0196], [0206], [0211], [0214], and [0245].
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 10, the “first and second connecting means” are rigid structures linking an elastic return element to a plate (Fig. 4).
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.
In claim 1, the “adjustment device” is a clamp or other rigid structure that changes the length of the third flexible element (200 in Fig. 10).
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 Rejections - 35 USC § 112
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.
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 3-5, 8-9, 12, 14, 16, 18, and 20 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.
The term “substantially” in claims 3-5 and 16 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. What is considered a substantial difference in stiffness will vary according to different persons of ordinary skill in the art.
The term “similar” in claims 4-5 is a relative term which renders the claim indefinite. The term “similar” 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. What is considered a similar stiffness will vary according to different persons of ordinary skill in the art.
Claim 8 lacks antecedent basis for “the second proximal end” in line 3. It has been read as -a second proximal end-.
The term “proximal” in claims 8 and 20 is a relative term which renders the claim indefinite. The term “proximal” 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. What is considered proximal will vary according to different persons of ordinary skill in the art. Additionally, what the ends are proximal to is not specified.
Claim 9 lacks antecedent basis for “the virtual center” in the penultimate line. It has been read as -a virtual center-.
Claim 12 has ambiguous antecedent basis for “a timepiece movement” in lines 1-2 because whether it refers to claim 1’s movement or a new movement is unknown. The limitation has been read as -the timepiece movement-.
Claim 14 lacks antecedent basis for “at least the two screws” in the penultimate line. The limitation has been read as -the screws- since claim 1 recites a plurality of screws or inertia blocks.
Claim 18 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The specification does not disclose how one of ordinary skill in the art may achieve spring stiffnesses such that, as claimed in claim 18, a stiffness of a second elastic return element will be more than 100 times that of a first elastic return element. The specification does not specify what materials would lead to this stiffness ratio, or what specific structural arrangement yields this ratio.
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 1-3, 7, 10, 12-13, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kahrobaiyan (US 20220171336).
Regarding claim 1, Kahrobaiyan teaches (Fig. 25) a timepiece movement comprising: a regulating system (240), and an adjustment device (6), the regulating system comprising: a frame (53, 116), an assembled balance (3) pivoted in relation to the frame about a geometric axis (central axis of sprig 2) and comprising movable screws or inertia blocks for adjusting the inertia of the assembled balance ([0009]), an elastic return system intended to link the assembled balance to the frame so that the assembled balance and the elastic return system form an oscillator (Fig. 25), the elastic return system comprising: a first elastic return element (2) in the form of a first hairspring having a first stiffness k1, a second elastic return element (52-53) having a second stiffness k2, and a third elastic return element (61, 114-115) having a third stiffness k3, the first elastic return element (2) and the second elastic return (52-53) element being assembled in series between the assembled balance (3) and the frame (53), and the third elastic return element (114-115) and the second elastic return element (52-53) being assembled in parallel between the frame (53, 116) and the first elastic return element (2).
Regarding claim 2, Kahrobaiyan teaches (Fig. 25) the timepiece movement as claimed in claim 1, wherein the adjustment device (6) is a device (106) for modifying the third stiffness k3 of the third elastic return element (61). Moving the device 106 changes the length of the third elastic return element 61, which causes its stiffness to change. See also [0101].
Regarding claim 3, Kahrobaiyan teaches the timepiece movement as claimed in claim 1, wherein: k2+k3>k1, and/or the second stiffness k2 is greater than the first stiffness k1 ([0013]).
Regarding claim 7, Kahrobaiyan teaches (Fig. 25) the timepiece movement as claimed in claim 1, wherein the first hairspring (2) comprises at least one first blade (2) linked to the assembled balance (3, Fig. 25).
Regarding claim 10, Kahrobaiyan teaches (Fig. 25) the timepiece movement as claimed in claim 1, wherein the timepiece movement comprises a connecting member and the connecting member comprises two plates (where 52-53 connect to 104) for receiving first and second connecting means (105 and 108), the two plates being linked to the frame by the second elastic return element (Fig. 25).
Regarding claim 12, Kahrobaiyan discloses a timepiece comprising the timepiece movement as claimed in claim 1 ([0011]).
Regarding claim 13, Kahrobaiyan discloses a method for adjusting a timepiece movement as claimed in claim 1, the method comprising: modifying the third stiffness k3 of the third elastic return element. Paragraph [0101] discloses moving 106 to move third elastic return element 61, thereby changing its stiffness.
Regarding claim 15, Kahrobaiyan teaches (Fig. 25) the adjustment method as claimed in claim 13, the method comprising, before the modifying of the third stiffness k3 ([0101]): putting the timepiece in beat comprising an operation of moving an intermediate member (106) that is part of the frame in relation to a rest of the frame (53, 116), the intermediate member linking a connecting member (104-105) to the rest of the frame (116), the connecting member providing a link between the first hairspring (2) and the second elastic return element (52-53). Paragraph [0101] discloses that the third stiffness k3 of spring 61 is modified by moving the intermediate member 106, so this intermediate member must be moved before the third stiffness is modified.
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 4-5, 11, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kahrobaiyan.
Regarding claims 4 and 16, Kahrobaiyan discloses the timepiece movement as claimed in claim 1, wherein: the second stiffness k2 is greater than the first stiffness k1 ([0013]).
Kahrobaiyan is silent regarding the first stiffness and third stiffness being of the same order, so that the second stiffness is greater than the third stiffness.
One of ordinary skill in the art would recognize Kahrobaiyan’s first stiffness is a known stiffness appropriate for horology that predictably creates functional timepieces.
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 Kahrobaiyan’s third stiffness to be of the same order as Kahrobaiyan’s first stiffness, so that the second stiffness is also greater than the third stiffness. One of ordinary skill in the art would have been motivated to make this modification to predictably obtain a balance whose oscillation frequency is appropriate for timekeeping.
Regarding claim 5, Kahrobaiyan discloses the timepiece movement as claimed in claim 1, wherein the second stiffness k2 is greater than the first stiffness k1 ([0013]).
Kahrobaiyan is silent regarding the second stiffness and third stiffness being of the same order, so that the third stiffness is greater than the first stiffness.
One of ordinary skill in the art would recognize Kahrobaiyan’s second stiffness is a known stiffness appropriate for horology that predictably creates functional timepieces.
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 Kahrobaiyan’s third stiffness to be of the same order as Kahrobaiyan’s second stiffness, so that the third stiffness is also greater than the first stiffness. One of ordinary skill in the art would have been motivated to make this modification to predictably obtain a balance whose oscillation frequency is appropriate for timekeeping.
Regarding claim 11, Kahrobaiyan discloses the timepiece movement as claimed in claim 1.
Kahrobaiyan does not disclose at least one of the first, second, or third elastic return elements comprising metal.
Springs are often formed from metal due to metal’s high elasticity.
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 Kahrobaiyan’s elastic return material for metal. One of ordinary skill in the art would have been motivated to make this substitution to achieve the predictable result of obtaining an oscillatory element needed for timekeeping.
Regarding claim 14, Kahrobaiyan discloses the adjustment method as claimed in claim 13, the method comprising moving the screws or inertia blocks of the assembled balance in relation to the geometric axis ([0009]) and modifying the third stiffness k3 ([0101]).
Kahrobaiyan does not show the screws moving before the modifying of the third stiffness k3.
One of ordinary skill in the art would recognize that given a multi-step method, one step must occur after another. One of ordinary skill in the art would also recognize that moving screws on a balance is independent of modifying stiffness of a separate elastic element, so that moving the screws before or after would have symmetrical outcomes.
Accordingly, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have moved Kahrobaiyan’s screws before modifying the third stiffness. One of ordinary skill in the art would have been motivated to make this ordering because it would have been obvious to try as one of two identifiable, predictable orderings for the method that would both be expected to successfully change the oscillation frequency of the balance.
Claims 6 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kahrobaiyan in view of Gigandet (US 20090168610).
Regarding claims 6 and 19, Kahrobaiyan discloses the timepiece movement as claimed in claim 1.
Kahrobaiyan does not show the assembled balance and the elastic return system being configured and/or arranged so that an oscillation frequency of the oscillator is in a range of from 4-5 Hz.
Gigandet teaches an assembled balance with an oscillation frequency of 5 Hz ([0026]).
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 Kahrobaiyan’s oscillation frequency to be 5 Hz, as taught by Gigandet. One of ordinary skill in the art would have been motivated to make this modification to create an accurate timepiece.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kahrobaiyan in view of Sarchi et al. (US 20160306324).
Regarding claim 8, Kahrobaiyan discloses (Fig. 25) the timepiece movement as claimed in claim 1, wherein the third elastic return element includes at least one second blade (114-115), a second end of which is intended to fasten said second blade to the frame (116).
Kahrobaiyan does not show the third elastic return element comprising a second hairspring.
Sarchi teaches (Fig. 1) a first and third elastic return element (10A, 10B), both comprising a hairspring (10A, 10B).
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 Kahrobaiyan’s third elastic return element 61 for Sarchi’s hairspring. One of ordinary skill in the art would have been motivated to make this substitution to finely adjust the oscillation frequency and elastic element length ([0056]) and maintain isochronism ([0023]).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Kahrobaiyan in view of Di Domenico (US 2023/0176522).
Regarding claim 17, Kahrobaiyan discloses timepiece movement as claimed in claim 1.
Kahrobaiyan does not show k3=α×k1 in which 0.5≤α≤2, and k2=β×k1 and/or k2=β×k3 in which 10≤β≤80.
Di Domenico discloses a stiffness ratio between two elastic elements being between 10 and 80 due to a material of a first elastic element of the two elastic elements being silicon and a material of a second elastic element of the two elastic elements being metal ([0030], [0042]).
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 Kahrobaiyan’s first and second elastic element materials for Di Domenico’s first and second elastic element materials such that k2=β×k1 in which 10≤β≤80. One of ordinary skill in the art would have been motivated to make this substitution because Di Domenico’s materials are known materials for constructing elastic elements for a timepiece oscillator that predictably create an operational timepiece.
The combination of Kahrobaiyan and Di Domenico does not show k3=α×k1 in which 0.5≤α≤2 because the combination is silent on what the third elastic element is made of.
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 Kahrobaiyan’s third elastic element material for Di Domenico’s first elastic element material so that k3=α×k1 in which 0.5≤α≤2. One of ordinary skill in the art would have been motivated to make this substitution because Di Domenico’s material is a known material for constructing elastic elements of a timepiece oscillator that predictably create an operational timepiece.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kahrobaiyan in view of Legeret (US 20180024498).
Regarding claim 18, Kahrobaiyan discloses timepiece movement as claimed in claim 1.
Kahrobaiyan does not show k3=γ×k2 in which 0.5≤γ≤2, and k2=δ×k1 in which 100≤δ≤200.
Legeret discloses a stiffness ratio between two elastic elements being 100 ([0082])
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 Kahrobaiyan’s first and second elastic elements for Legeret’s first and second elastic elements such that k2=δ×k1 in which 100≤δ≤200. One of ordinary skill in the art would have been motivated to make this substitution to achieve the predictable result of creating a functional timepiece oscillator that will accurately tell time.
The combination of Kahrobaiyan and Legeret does not show k3=γ×k2 in which 0.5≤γ≤2 because the combination is silent on what the third elastic element is made of.
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 Kahrobaiyan’s third elastic element material for Legeret’s first elastic element material so that k3=γ×k2 in which 0.5≤γ≤2. One of ordinary skill in the art would have been motivated to make this substitution because Legeret’s elastic element material is a known material for constructing elastic elements of a timepiece oscillator that predictably create an operational timepiece.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kahrobaiyan in view of Stranczl (US 20160147197).
Regarding claim 20, Kahrobaiyan discloses the timepiece movement as claimed in claim 7.
Kahrobaiyan does not show the at least one first blade being linked to the assembled balance via a collet arranged at a first end of the first blade and fastened to a staff secured to a balance of the assembled balance.
Stranczl teaches (Figs. 1-2) a first blade (2) linked to an assembled balance (Figs. 1-2 and 4) via a collet (1) arranged at a first end of the first blade (Figs. 1-2) and fastened to a staff (4) secured to a balance of the assembled balance.
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 Stranczl’s collet and balance staff with Kahrobaiyan’s timepiece. One of ordinary skill in the art would have been motivated to make this combination to increase a holding torque and prevent breaking due to excessive stress ([0004] and [0011] of Stranczl).
Allowable Subject Matter
Claim 9 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.
Regarding claim 9, Kahrobaiyan discloses (Fig. 25) the second elastic return element comprising a pair of elastic blades (51-52) having a virtual center of intersection (Fig. 25).
The prior art does not show or suggest a virtual center of intersection of a pair of blades coinciding with a point through which a geometric axis of a balance passes, in combination with the other limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Jeanneret (US 20230185241) teaches a balance comprising multiple screws for adjusting the balance’s inertia (Fig. 1).
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
/EDWIN A. LEON/Primary Examiner, Art Unit 2833