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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: “WATCH WITH VIBRATING PIEZOELECTRIC CERAMIC PLATE FOR PRODUCING SOUND.”
Claim Objections
Claim 1 is objected to because of the following informalities: "an vibration plate" is grammatically incorrect and should be -a vibration plate-. Appropriate correction is required.
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:
(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.
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 ”first joining member” is a packing element or adhesive ([0030]).
The “second joining member” is double-sided tape ([0026]).
The “third joining member” is double-sided tape ([0033]).
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 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 2-14, 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.
Claims 2-4 have ambiguous antecedent basis for “an inner peripheral surface of the opening of the cover frame” because claim 1 on which these claims depend already recites “an inner peripheral surface of the opening of the cover frame”. The recitations in claims 2-4 have been read as -the inner peripheral surface of the opening of the cover frame-.
Claim 4/2 has ambiguous antecedent basis for “an outer peripheral surface of the cover plate” because claim 2 already recites “an outer peripheral surface of the cover plate.” The recitation in claim 4 has been read as -the outer peripheral surface of the cover plate-.
Claims 3-4 have ambiguous antecedent basis for “another side of the cover plate” because claim 1 on which these claims depend already recites “another side of the cover plate”. The limitation in claim 1 has been read as -an other side of the cover plate- and the recitations in claims 3 and 4 have been read as -the other side of the cover plate-.
Claims 5-6 have ambiguous antecedent basis for “another side of the vibration plate” because claim 1 on which these claims depend already recites “another side of the vibration plate”. The limitation in claim 1 has been read as -an other side of the vibration plate- and the recitations in claims 5 and 6 have been read as -the other side of the vibration plate-.
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 1-2, 15-16, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ihochi (US 4362400) in view of Ozawa (US 20090003141), Benoist et al. (US 20220382217), and Kitajia (US 20050117087).
Regarding claim 1, Ihochi discloses (Fig. 1) a device comprising: a case body including a peripheral wall portion (1); a cover frame (bottom of 1) provided on one side of the peripheral wall portion of the case body with an opening (for 6); a cover plate (6) formed to have a plate shape and arranged in the opening of the cover frame (Fig. 1); a vibration plate (8) arranged on another side of the cover plate; and a piezoelectric plate (7) arranged on another side of the vibration plate, wherein an inner peripheral surface of the cover frame (where 1 meets 12) and an outer peripheral surface of the vibration plate are spaced apart from each other (Fig. 1).
Ihochi does not show the cover frame being made of metal, the vibration plate being made of metal, and the piezoelectric plate being made of ceramic.
Ozawa teaches a cover frame made of metal ([0072]).
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 Ozawa’s cover frame with Ihochi’s cover frame. One of ordinary skill in the art would have been motivated to make this combination to achieve the predictable result of creating a durable timepiece that securely holds its components together ([0007] of Ozawa).
The combination of Ihochi and Ozawa does not show the vibration plate being made of metal and the piezoelectric plate being made of ceramic.
Benoist teaches a vibration plate made of metal ([0057]).
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 Ihochi’s vibration plate material for metal. One of ordinary skill in the art would have been motivated to make this substitution as a known material that predictable vibrates.
The combination of Ihochi, Ozawa, and Benoist does not show the piezoelectric plate being ceramic.
Kitajima teaches a piezoelectric ceramic plate ([0066]).
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 Ihochi’s piezoelectric plate for Kitajima’s piezoelectric plate. One of ordinary skill in the art would have been motivated to make this substation as a known, predictable, and equivalent shape/material for acquiring a piezoelectric element.
Regarding claim 2, Ihochi in view of Ozawa, Benoist, and Kitajima discloses the device according to claim 1.
Ihochi does not show the inner peripheral surface of the opening of the cover frame and an outer peripheral surface of the cover plate being spaced apart from each other.
Ozawa teaches (Fig. 1) a back cover, wherein an inner peripheral surface of an opening of a cover frame (121) and an outer peripheral surface of a cover plate (122) being spaced apart from each other (Fig. 1 shows 121 and 122 being spaced apart).
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 Ihochi’s cover plate for Ozawa’s back cover and cover plate such that inner peripheral surface of the opening of the cover frame and an outer peripheral surface of the cover plate are spaced apart from each other. One of ordinary skill in the art would have been motivated to make this substitution to waterproof and shockproof the device ([0037] of Ozawa).
Regarding claims 15-16, Ihochi in view of Ozawa, Benoist, and Kitajima discloses the device according to respective claims 1-2, wherein the cover frame is a screw back type (Fig. 5 and [0041] of Ozawa).
Ihochi does not show the cover plate including sapphire glass.
Ozawa teaches a glass cover plate ([0072]), and sapphire glass being a type of glass ([0153]).
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 Ihochi’s cover plate to include sapphire glass, as suggested by Ozawa. One of ordinary skill in the art would have been motivated to make this modification to achieve the predictable result of having a scratch-resistant, hard, strong, and visually pleasing device.
Regarding claims 19-20, Ihochi in view of Ozawa, Benoist, and Kitajima discloses (Fig. 1, Ihochi) a watch (title, Ihochi)) comprising the device as recited in respective claims 1-2; a watch module (3) arranged in a housing portion formed inward of the peripheral wall portion of the case body; and a cover (5) covering another side of the watch module.
Claims 3-6 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ihochi in view of Ozawa, Benoist, and Kitajima, and further in view of Taga et al. (US 20210313670).
Regarding claims 3-4, Ihochi in view of Ozawa, Benoist, and Kitajima discloses (Fig. 1 of Ozawa) the device according to respective claims 1-2, further comprising: a first joining member (123) arranged between the inner peripheral surface of the opening of the cover frame and an outer peripheral surface of the cover plate (Fig. 1).
Ihochi in view of Ozawa, Benoist, and Kitajima does not show a third joining member arranged between a main surface on another side of the cover plate and a main surface on one side of the vibration plate and formed to be annular, wherein a gap is formed between the vibration plate and the cover plate in an opening of the third joining member.
Taga teaches (Fig. 3) a third joining member (TP1) arranged between a main surface on another side of a first plate (32) and a main surface on one side of a second plate (20) and formed to be annular, wherein a gap is formed between the two plates in an opening of the third joining member (Fig. 3). See also [0035].
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 Taga’s third joining member with Ihochi’s device. One of ordinary skill in the art would have been motivated to make this combination to achieve the predictable result of securing the device’s components together so that the device does not fall apart.
Regarding claims 5-6, Ihochi in view of Ozawa, Benoist, Kitajima, and Taga discloses the device according to claims 3-4, respectively, wherein the piezoelectric ceramic plate is provided on a main surface on the other side of the vibration plate (Fig. 1 of Ihochi).
Ihochi in view of Ozawa, Benoist, Kitajima, and Taga does not show the vibration plate being in a region corresponding to the opening of the annular third joining member.
One of ordinary skill in the art would recognize that if a joining member adheres two elements together, then a third element placed in between the joining member and the two elements would block the joining member from adhering the two elements.
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 provided Ihochi’s piezoelectric ceramic plate in a region corresponding to the opening of the third joining member. One of ordinary skill in the art would have been motivated to make this provision as a predictable and identifiable location for placing the piezoelectric ceramic plate without interfering with the functionality of the third joining member. The courts have also held that absent any criticality, a change of location is an obvious modification one of ordinary skill in the art would have been able to provide using routine experimentation to achieve an invention’s intended use since the courts have ruled that there is no invention in shifting position if a device’s operation is not modified. See In re Japikse, 86 USPQ 70 (CCPA 1950) and MPEP 2144.04 VI.
Regarding claims 17-18, Ihochi in view of Ozawa, Benoist, Kitajima, and Taga discloses the device according to respective claims 3-4, wherein the cover frame is a screw back type (Fig. 5 and [0041] of Ozawa).
Ihochi does not show the cover plate including sapphire glass.
Ozawa teaches a glass cover plate ([0072]), and sapphire glass being a type of glass ([0153]).
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 Ihochi’s cover plate to include sapphire glass, as suggested by Ozawa. One of ordinary skill in the art would have been motivated to make this modification to achieve the predictable result of having a scratch-resistant, hard, strong, and visually pleasing device.
Allowable Subject Matter
Claims 7-14 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.
The following is a statement of reasons for the indication of allowable subject matter: regarding claims 7-8, Suda (US 3,906,713) teaches conductive solder arranged on another side of a piezoelectric ceramic plate, and a covering plate arranged on the other side of the piezoelectric ceramic plate, with the conductive solder interposed between the two plates (column 3, lines 20-31).
The prior art does not show or suggest a conducive adhesive tape arranged on another side of a piezoelectric ceramic plate interposed between the ceramic plate and a covering plate arranged on the other side of the ceramic plate, in combination with the other limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rainer (EP 3644133) teaches a watch with a vibrating membrane (Figs. 1-2).
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 from 10-6 PM PT.
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/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2833
/renee s luebke/ Supervisory Patent Examiner
Art Unit 2833