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 .
Response to Arguments
Applicant's arguments filed 6/23/2026 have been fully considered but they are not persuasive.
Regarding “cover” vs “watch band”, examiner notes that applicant does not sufficiently describe the difference between the terms. Applicant has successfully argued the “cover” is not required in claim 1, but that there is a substrate required in claim 1, because the “middle portion” is not part of the tensioners. Claim 2 merely names the substrate which is present in claim 1 the “cover”. Examiner still contends that claim 27 is most clear.
Examiner notes that applicant has not made an amendment to the structure of the watch band in either independent claim 1 or 27.
Applicant argues that replacing the “shape memory” material of Yokoyama with the “shape memory” material of Feinstein is not an obvious substitution because, in summary, “Feinstein’s material does the same thing as Yokoyama’s material, but is less expandable”. Therefore, applicant’s argument is not that Feinstein’s material is incapable of performing the same function, applicant’s argument is that Feinstein’s material can perform the same function to a lesser extent, and therefore the replacement of material “lacks a reasonable expectation of success”. Examiner and applicant seem to agree that both materials can perform the same function in the same situation (a watch band), even Feinstein states that these are equivalent materials for this function (column 1 line 1). Therefore, there is a reasonable expectation of success (in that the watch band will still have the ”shape memory” function), even if the watch band of Yokoyama stretches less using the alloy of Feinstein, because Feinstein provides the same function, just to a lesser degree.
Regarding choosing the shape memory alloy with the smaller range of Feinstein over the shape memory polymer with the larger range of Yokoyama: First, applicant’s citation regarding “double the band length” refers to the whole band, which, according to Yokoyama figure 9, also includes a middle section without tensioners, and that middle section is stretchable, so that the entire “double the band length” is not required to be solely provided by the tensioners. The band 620 of Yokoyama is known to be “plastic, rubber, or other fibrous, organic, polymeric, or synthetic materials” (column 6 line 30) and therefore, the band length may be doubled by the material of the cover of Yokoyama. Second, the choice of shape memory alloy vs shape memory polymer depends on the pros and cons of each material. Newly cited reference Hu discloses “polymer have their own advantages and disadvantages”, in that liquid crystalline elastomers have a high transition temperature and high cost, the synthesis procedure is complicated, and the polymer “may lose the effect of two way shape memory without external force” (column 1 line 63 of Hu). Therefore, examiner still contends that these are equivalent materials for equivalent purposes (as disclosed by Feinstein), and may be functionally switched depending on the pros/cons discussed in Hu.
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.
Claim(s) 1-2, 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over 11540599 Yokoyama in view of 9609921 Feinstein.
Regarding claim 1, Yokoyama discloses a watch band comprising:
a first end portion (indicated in annotated figure 9) configured to releasably connect to a first side of a watch housing (“housing 604 can be permanently or removably attached to the band 608” column 14, line 24);
a first tensioner 650 (annotated) comprising a shape-memory alloy (“shape memory polymer” column 14 line 9) configured to controllably adjust a length of the first end portion (“extended configuration and a retracted configuration” column 14 line 7);
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a second end portion (indicated in annotated figure 9) configured to releasably connect to a second side of the watch housing (in the same manner as the first end portion);
a second tensioner 650 (annotated) comprising the shape-memory alloy (“shape memory polymer” column 14 line 9) configured to controllably adjust a length of the second end portion (in the same manner as the first end portion); and
a middle portion 620 (as annotated in figure 9) between the first end portion and the second end portion (as shown in figure 9), the middle portion being stretchable to adjust a length of the watch band (“material having flexibility suitable for easily contouring to a user’s wrists” column 14 line 28 and has identical function as that claimed by applicant, and can be made of “a fluoroelastomeric polymer (or other suitable polymer)” column 6 line 47).
Feinstein discloses a watch using “shape memory material” which “may comprise at least one of a shape memory polymer or shape memory alloy” (column 11 lines 2-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize a shape memory alloy in place of a shape memory polymer in Yokoyama, as these are state of the art recognized equivalent materials. The choice between polymer and alloy may be made in order to allow the easiest availability and/or cheapest material costs and/or longest known duration of use and/or easiest to train the “shape memory” function. Note that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering design choice. See MPEP 2144.07. Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”.
Note that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. MPEP 2114. Examiner notes the phrases in italics above, and throughout the action, are considered intended use. Examiner contends that the structure capable of performing the intended use is met in the prior art, and is described how the structure disclosed performs the claimed functions in the parentheses; therefore, all italicized language is considered and shown in the prior art. Further, examiner notes that the disclosed structure is capable of performing the intended use claimed by applicant.
Regarding claim 2, Yokoyama as modified discloses the watch band of claim 1, further comprising a cover (608 of Yokoyama is identical in scope to “cover”) defining the first end portion (where the first tensioners are located within the band), the middle portion (without tensioners as shown in figure 9) and the second end portion (where the second tensioners are located within the band). The middle portion (of the cover 608) is made of a “fluoroelastomeric polymer (or other suitable polymer)” disclosed by Yokoyama, which is identical to applicant’s disclosed “e.g. a fluoroelastomeric polymer” in [0115]. Therefore, the disclosed structure identical to the claimed structure, the disclosed structure having material identical to the disclosed material (Fluoroelastomeric polymer), the identical material is “configured to transition” between the three length configurations as claimed.
Regarding claim 6, Yokoyama as modified discloses the watch band of claim 2, wherein the cover comprises an elastic polymer (“band 108 can be formed, at least in part, from a polymer…having flexibility suitable…” column 6 line 40).
Regarding claim 7, Yokoyama as modified discloses the watch band of claim 1, wherein the first tensioner and the second tensioner are configured to respond to a stimulus to adjust a fastening force of the watch band on a wrist of a user (“shape memory polymer that changes a characteristic thereof in response to a stimulus” column 14 line 11).
Regarding claim 8, Yokoyama as modified discloses the watch band of claim 1, wherein: the first tensioner is configured to receive a first electrical current to controllably adjust the length of the first end portion by generating heat within the first tensioner (“integrated circuit configured to apply a stimulus to cause tension” column 11 line 34); and the second tensioner is configured to receive a second electrical current to controllably adjust the length of the second end portion by generating heat within the second tensioner (the same as the first tensioner).
Claim(s) 3-5, 27-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama as modified by Feinstein applied to claims 1-2, 6-8 above, and further in view of 2023/0020875 Zhang.
Examiner notes that claims 3 and 27 will be treated together, as they have similar, though not identical, scopes.
Regarding claim 3, Yokoyama discloses the watch band of claim 2, wherein: the both tensioners 650 have a first end and a second end, the ends of the tensioners 650 have the extended and contracted configurations, and which bring the cover/watch band with a larger diameter in the extended configuration, and a smaller diameter in the contracted configuration. Yokoyama states that the tensioners are attached by being “within or otherwise coupled to” the cover, but does not disclose what the ”otherwise coupled” structure is. Yokoyama discloses regarding figure 14 that the “tensioning element can be coupled to the support layer 820 by a buffer layer 830 that facilitates secure coupling” (column 17 lines 15-20).
Zhang discloses a watch having bands (figure 7) with “memory metal portions” 120 in several configurations (as shown in figures 5a-5h). The memory metal portions 120 are attached at one end to a lug 130 (figure 2) and at a second end to and anchor 140 (in the manner taught by figure 6). These lugs130 and anchors 140 are utilized on each side of the watch housing 200, and therefore apply to tensioners on both side of the watch housing.
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize the Zhang method of “otherwise coupling” shape memory alloy strands as taught by Yokoyama to the known watch band of Yokoyama in the old and well known manner of attachment, as taught by Zhang. Examiner contends that using an old and well known manner of coupling shape memory material, such as that taught by the watch of Zhang, to an old and well known watch using shape memory material that does not define the “otherwise coupling” manner of the shape memory material to the cover as required by both Zhang and Yokoyama, does not affect the form, function, or use, of Yokoyama, but merely clarifies the understanding of how to “otherwise couple” mentioned in Yokoyama. Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”.
Regarding claim 27, Yokoyama discloses a watch band comprising:
a cover (material 608) extending from a first end to a second end of the watch band (as annotated above) and defining: a first end portion (annotated above); a second end portion (annotated above); and a middle portion between the first end portion and the second end portion (annotated above), the middle portion being stretchable (“material having flexibility suitable for easily contouring to a user’s wrists” column 14 line 28 and has identical function as that claimed by applicant) to adjust a length of the watch band (“can adjust a length of the band” column 15 line 7);
a first tensioner 650 (annotated above) comprising a shape-memory alloy (Yokoyama teaches “polymer”, Feinstein teaches equivalency to alloy) adjustably connecting end of the tensioner to the opposite end of the tensioner to controllably adjust a length of the first end portion (in the manner described by Yokoyama “adjust a length”); and
a second tensioner 650 (annotated above) comprising the shape-memory alloy (Yokoyama teaches “polymer”, Feinstein teaches equivalency to alloy) adjustably connecting end of the tensioner to the opposite end of the tensioner to controllably adjust a length of the second end portion (in the manner described by Yokoyama).
Yokoyama does not disclose “alloy”, but discloses shape memory polymer. Yokoyama states that the tensioners are attached by being “within or otherwise coupled to” the cover, but does not disclose what the ”otherwise coupled” manner is.
Feinstein discloses a watch using “shape memory material” which “may comprise at least one of a shape memory polymer or shape memory alloy” (column 11 lines 2-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize a shape memory alloy in place of a shape memory polymer in Yokoyama, as these are state of the art recognized equivalent materials. The choice between polymer and alloy may be made in order to allow the easiest availability and/or cheapest material costs and/or longest known duration of use and/or easiest to train the “shape memory” function. Please see cited reference Hu (column 1 line 63-column 2 line 7) regarding the pros/cons of shape memory alloys and shape memory polymers. Note that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious engineering design choice. See MPEP 2144.07. Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”.
Zhang discloses a watch having bands (figure 7) with “memory metal portions” 120 in several configurations (as shown in figures 5a-5h). The memory metal portions 120 are attached at one end to a lug 130 (figure 2) and at a second end to and anchor 140 (in the manner taught by figure 6). These lugs130 and anchors 140 are utilized on each side of the watch housing 200, and therefore apply to tensioners on both side of the watch housing.
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize the Zhang method of “otherwise coupling” shape memory alloy strands as taught by Yokoyama to the known watch band of Yokoyama in the old and well known manner of attachment, as taught by Zhang. Examiner contends that using an old and well known manner of coupling shape memory material, such as that taught by the watch of Zhang, to an old and well known watch using shape memory material that does not define the “otherwise coupling” manner of the shape memory material to the cover as required by both Zhang and Yokoyama, does not affect the form, function, or use, of Yokoyama, but merely clarifies the understanding of how to “otherwise couple” mentioned in Yokoyama. Examiner contends that these are known equivalents and are used for the same purpose within the ordinary skill in the art. See MPEP 2144 (I): “rationale to modify or combine the prior art does not have to be expressly stated in the prior art…it may be reasoned from knowledge generally available to one of ordinary skill in the art”.
Regarding claims 4 and 31, Yokoyama as modified discloses the watch band of claims 3 and 27, wherein: the first end portion (of the section of the cover of Yokoyama, as annotated above) further comprises multiple additional first tensioners (three tensioners on each side) of the shape-memory alloy connecting the first lug to the first anchor (lug and anchor taught by Zhang); and the second end portion further comprises multiple additional second tensioners (three tensioners 650) of the shape-memory alloy connecting the second lug to the second anchor (lug and anchor taught by Zhang).
Regarding claims 5 and 30, Yokoyama as modified discloses the watch band of claims 3 and 27, wherein the cover (material 608 which is a “fluoroelastomeric polymer” as disclosed by Yokoyama, which is identical to applicant’s disclosed material of the cover) elastically deformable in response to movement of the first lug with respect to the first anchor (by Yokoyama disclosing the narrower disclosed material of “fluoroelastomeric polymer”, the cover having a function based on the material must be considered met by the prior art disclosing the identical material.
Regarding claim 28, Yokoyama as modified discloses the band of claim 27, wherein the cover comprises an elastic polymer (“band 108 can be formed, at least in part, from a polymer…having flexibility suitable…” column 6 line 40). Please see claim 6 above.
Regarding claim 29, Yokoyama as modified discloses the band of claim 27, wherein the middle portion 620 is part of the cover 608, and the cover 608 is made of “fluoroelastomeric polymer”, which is the same material disclosed (but not claimed) by applicant. Therefore, the material of “fluoroelastomeric polymer” is considered to meet all functional limitations (i.e. “configured to transition”) because the material of the same structural part is identical to the disclosed material.
Regarding claim 32, please see rejection of claim 8 above. Yokoyama as modified discloses the watch band of claim 27, wherein: the first tensioner is configured to receive a first electrical current to controllably adjust the length of the first end portion by generating heat within the first tensioner (“integrated circuit configured to apply a stimulus to cause tension” column 11 line 34); and the second tensioner is configured to receive a second electrical current to controllably adjust the length of the second end portion by generating heat within the second tensioner (the same as the first tensioner).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see Hu for the pros/cons of the shape memory alloy/shape memory polymer decision making criteria.
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 EMILY M MORGAN whose telephone number is (303)297-4260. The examiner can normally be reached Mon-Thurs 8-5 MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571)272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMILY M MORGAN/ Primary Examiner, Art Unit 3677
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