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 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 1-8, 27-32 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 claims 1, 2, and 27, examiner notes that applicant indicates a separate scopes of the terms “watch band” and “cover”, but does not distinguish the difference in scope between these two terms in any meaningful manner. Examiner contends that “watch band 400” requires the inclusion of “cover 412”, as the cover 412 is the material that has the first end, middle, and second end, portions; the “cover 412” is the substrate to which the tensioners 450 are attached. “Watch band” is the combination of all the parts of figure 6. Examiner contends that claim 1 omits the essential element of “cover”; without the “cover”, the two tensioners cannot form a “watch band” as required by the title. Claim 27 accurately portrays the difference in scope between watch band and cover, and indicates that examiner’s assertion that the cover has the first end, middle, and second end, portions.
Regarding claims 2 and 29, applicant claims “cover extending continuously to surround” the tensioners. The intended definition of “to surround” is not definite. Examiner notes that the tensioners are visible in elected figures 6-8, and applicant does not further define what “surround” means.
Regarding claims 5 and 30, applicant claims two “end portions” in the independent claims 1 and 27, which seem to be identical in scope to the newly claimed “first portion of the cover interposed between the first anchor and the first lug”. The difference in scope between “end portions” of the independent claims and “portion” in claim 5 is not evident. Examiner contends that by having the portions of claims 1 and 27, the device simultaneously discloses the “portions” of claim 5.
Dependent claims inherit the same issues from parent claims and do not resolve any indefinite issues.
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, please see 112b rejection regarding the essential element of the cover. Examiner assumes that the cover is required to be included in the structure of claim 1, as it is the essential element that has the first end, middle, and second end, as evidenced by claim 27.
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).
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. 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 identical in scope to band/cover, see 112b above) extending continuously (shown in figure 9 continuous from watch housing to watch housing) to surround the first tensioner and the second tensioner (please see 112b rejection above, “tensioning elements can extend within…the cover” column 14 line 32) and defining the middle portion (as indicated in annotated figure 9 above).
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. 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 a first portion of the cover (identical to the first end portion of claim 1) is interposed between the first anchor (required by Yokoyama and taught explicitly in Zhang) and the first lug (required by Yokoyama and taught explicitly in Zhang), and a second portion of the cover is interposed between the second anchor and the second lug (identical to the first portion).
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, please see the indefiniteness rejection above regarding “to surround”, and the rejection of claim 2 above. Yokoyama as modified discloses the band of claim 27, the cover “extends to continuously surround” the tensioners 650 (“tensioning elements can extend within…the cover” column 14 line 32).
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 892.
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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