Detailed Action begins on Page 3
Table of Contents
Notice of Pre-AIA or AIA Status 3
Claim Objections 3
Claims 1-15 3
Claim Interpretation 4
112(f) not invoked despite presence of “Means” 5
Claim Rejections - 35 USC § 112(b) 6
Claims 1-2 and 5 6
Claim Rejections - 35 USC § 102 7
Claims 1-15 7
Citation of Relevant Art 10
Conclusion 12
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
Claims 1-15
Claims 1-15 are objected to because of the following informalities:
Claim 1 recites the limitation “at least in part” in lines 2 and 3-4 and this limitation does not add or take away from any other limitation in the claim and is simply unnecessary with the transitional phrase “comprising”.
Claims 2-15 depend from claim 1 and are therefore also included in this objection.
Claim 7 recites the limitation “each screw being screwed to a greater or lesser extent” and the phrase “to a greater or lesser extent” is unnecessary to this limitation of the claim.
Claims 1, 2, 8 and 13 recite the limitation “centre of rotation” and this British equivalent of the term should be replaced with “center of rotation”.
Appropriate correction is required.
The following limitation is noted for being pertinent to the objections above, but is NOT being objected to:
Claim 9 recites the limitation “at least partly annular” and unlike the previous objections this limitation does provide a substantive limitation because partly vs wholly annular (or at least annular without the partly adjective next to it) provides a different interpretation of what is required of the shape of the deformable body. Therefore claim 9 is NOT objected to for this limitation.
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:
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;
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
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.
112(f) not invoked despite presence of “Means”
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
Such claim limitation(s) is/are:
Claim 1 recites the limitation “adjustment means for adjusting the sensitivity of the deformable body to temperature change” and recites sufficient structure, materials, or acts to entirely perform the recited function are provided in the limitations “the adjustment means being provided with a first inertial element arranged on the deformable body in order to be able to modify the moment of inertia thereof, the first inertial element being capable of moving relative to the deformable body into a plurality of positions, wherein the positions form a continuous set.”
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 112(b)
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, 3 and 5
Claim 2, 3 and 5 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.
Regarding Claim 2, it recites the limitation “a substantially constant distance from the centre of rotation” and the term “substantially constant” is a relative term which renders the claim indefinite. The term 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.
Claim 3 depends from claim 2 and is also rejected therein.
Regarding Claim 5, it recites the limitation “into a plurality of positions forming a continuous set” and it is indefinite whether these are the same plurality of positions and continuous set limitations introduced in claim 1 or separate limitations. Either proper use of antecedent basis or a clearly defined distinction between the elements is required. For purposes of examination, this limitation of claim 5 will be interpreted as reciting a second plurality of positions forming a second continuous set.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-15
Claims 1-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakajima et al. (CH 715890 A2, hereinafter “Nakajima”).
Regarding Claim 1, Nakajima discloses a balance (54) for a regulating member (52) of a horological movement (2), the balance comprising, at least in part, a body that can be deformed (80) as a function of temperature [0062], the deformable body being arranged, at least in part, on the periphery of the balance [fig. 14], the balance being configured so as to be able to move about a centre of rotation (O1), the balance comprising adjustment means (64) for adjusting the sensitivity of the deformable body to temperature change [0099], the adjustment means being provided with a first inertial element (100, 102) arranged on the deformable body in order to be able to modify the moment of inertia thereof [0099], the first inertial element being capable of moving relative to the deformable body into a plurality of positions (310) [fig. 14], wherein the positions form a continuous set.
Regarding Claim 2, Nakajima discloses the balance according to claim 1, and further discloses wherein the first inertial element is arranged at a substantially constant distance from the centre of rotation, regardless of the position thereof relative to the deformable body, for a given configuration of the deformable body relative to the centre of rotation [fig. 14] (based on the location of the adjustment positions 310).
Regarding Claim 3, Nakajima discloses the balance according to claim 2, and further discloses wherein the first inertial element is capable of being displaced in a direction substantially tangential to the deformable body [fig. 14] (the adjustment member/inertial element is displaced by moving it between the various positions 310, these different positions being arranged tangentially to the deformable body).
Regarding Claim 4, Nakajima discloses the balance according to claim 1, and further discloses wherein the deformable body comprises a first peripheral free end [fig. 5] [0019], the first inertial element being arranged at the first free end [fig. 5].
Regarding Claim 5, Nakajima discloses the balance according to claim 1, and further discloses wherein the adjustment means comprise a second inertial element capable of moving relative to the deformable body into a plurality of positions forming a continuous set [fig. 14] [0060].
Regarding Claim 6, Nakajima discloses the balance according to claim 4, and further discloses wherein the deformable body comprises a second free end, the second inertial element being arranged at the second free end [fig. 14] [0060], so as to be able to be displaced in a direction substantially tangential to the balance [fig. 14] (the adjustment member/inertial element is displaced by moving it between the various positions 310, these different positions being arranged tangentially to the deformable body).
Regarding Claim 7, Nakajima discloses the balance according to claim 5, and further discloses wherein the first inertial element and the second inertial element are screws [0122], each screw being screwed [0122] to a greater or lesser extent and tangentially to the body in a free end in order to change their positions [fig. 14] (the screws are displaced by moving between the various positions 310, these different positions being arranged tangentially to the deformable body)
Regarding Claim 8, Nakajima discloses the balance according to claim 1, and further discloses wherein the first inertial element and the second inertial element are arranged symmetrically relative to the centre of rotation [fig. 14] [0060].
Regarding Claim 9, Nakajima discloses the balance according to claim 1, and further discloses wherein the deformable body has a peripheral shape that is at least partly annular [fig. 14].
Regarding Claim 10, Nakajima discloses the balance according to claim 9, and further discloses wherein the deformable body includes a first annular part (72, 80) [fig. 14] provided with the first free end [0019] [fig. 14], and a second annular part (72, 80) [fig. 14] provided with the second free end [0019] [fig. 14].
Regarding Claim 11, Nakajima discloses the balance according to claim 10, and further discloses wherein the first annular part and the second annular part each include a bimetallic attachment so that they can deform as a function of temperature [0062].
Regarding Claim 12, Nakajima discloses the balance according to claim 10, and further discloses wherein the two annular parts are connected by a radial section.
Regarding Claim 13, Nakajima discloses the balance according to claim 10, and further discloses wherein the two annular parts are arranged symmetrically relative to the centre of rotation [0060].
Regarding Claim 14, Nakajima discloses the balance according to claim 1, and further discloses a regulating member (52) [fig. 2], comprising a balance according to claim 1.
Regarding Claim 15, Nakajima discloses the regulating member according to claim 14, and further discloses a horological movement (2) [fig. 2], comprising a regulating member according to claim 14.
Citation of Relevant Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Nakajima et al. (JP 2019158844 A) discloses a temperature compensating balance that comprises: a balance body provided with a balance staff extending along a first axis O1 and configured to be rotated about the first axis O1 by the power of a hairspring; and an adjustment unit comprising bimetal pieces extending from positions rotationally symmetrical about the first axis O1 on the balance body along respective second axes O2, each consisting of materials with different thermal expansion rates stacked together in a direction crossing the second axis O2, and a weights attached to the respective bimetal pieces in a manner that allows the weights to move in a second axis direction along the second axis O2.
Niwa et al. (CN 107505826 B) discloses a temperature compensation type wheel of the invention, wherein the temperature compensation type balance with the pendulum shaft, which shaft as rotating centre, and a balance wheel; which has a rotational shaft arranged around the pendulum shaft configured in the circumferential direction along the circumferential direction of the rotary shaft to a plurality of stacks extending body is circular arc shaped, and respectively connecting the plurality of laminated body and the swinging shaft of the connecting member in the radial direction.
Born et al. (US 20210173350 A1) discloses an inertial mass with adjustment of inertia and/or unbalance for a horological resonator, including a plurality of mobiles for adjusting inertia and/or unbalance, toothed or fluted, each mounted pivotably about a mobile axis with respect to a flange that the inertial mass includes, and with a centre of mass off-centre with respect to this mobile axis, each mobile cooperating by meshing with an inertia and/or unbalance adjustment crown, toothed or fluted, under a permanent constraint exerted by an elastic return force exerted by the crown and/or the mobile.
Hessler et al. (EP 4134754 A1) discloses an inertial mass intended to be mounted on a regulating member, in particular of a clock movement, the inertial mass being configured to be subjected to a rotary oscillation movement at a predetermined frequency, the inertial mass comprising a rigid main body, characterized in that it comprises a flexible inertial element assembled to the main body, the flexible inertial element being configured to modify the geometry of the inertial mass as a function of the oscillation amplitude. The invention also relates to a regulating member and a clock movement comprising such an inertial mass.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN A JOHNSTON whose telephone number is (571)272-4353. The examiner can normally be reached Monday - Friday 10 a.m. - 7p.m. ET.
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/KEVIN ANDREW JOHNSTON/Examiner, Art Unit 2844
/REGIS J BETSCH/SPE, Art Unit 2844