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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 23 and 24 are objected to because of the following informalities:
Claim 23, ln. 4, recites “throughout a case”, should read “through the case”. This appears to be a typo.
Claim 23, ln. 13 recites “said elastic return means or said element or said case includes”. This appears to the examiner to be a typo which should read “said element of said case” based on recitation of the phrase “an element of said case” in ln. 10 of the claim.
Claim 24, ln. 2 recites “in complementary manner” should read “in a complimentary manner”. This appears to be a typo.
For the purposes of compact prosecution, the claims will be examined as if the above made corrections have been made.
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 use the word “means,” and are thus being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Such a claim limitations is:
The phrase “an elastic return means” in claim 23. Support for this limitation is found in the specification at para. [0049], which sates, in part, “[0049] ... a spring forms the elastic return means 5, visible in plan view in FIG. 3 ...”. Thus the term “an elastic return means” will be interpreted to mean “a spring”.
35 USC 112(f) invoked despite absence of “means”
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 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.
Such claim limitations are:
The phrase “... a first internal mobile included in each said watch of said watchmaking assembly to be driven, without direct contact ...” in claim 23. Support for this limitation can be found in the specification at para. [0016] which states “[0016] More particularly, the first internal mobile 1 includes a plurality of radial arms 101, 102, defining, in projection on a plane perpendicular to the first axis D1, a particular geometrical shape, and the first magnetic areas 210 include a plurality of magnets 201, 202, which are arranged radially around a second axis D2 according to this particular geometrical shape, so as to achieve an encoded magneto-mechanical connection specific to the single horological assembly 2000 under consideration.” Thus, the term “a first internal mobile” will be interpreted to mean “a plurality of radial arms defining a particular geometric shape”.
The phrase “a particular shape arranged to minimise the effects of ...” in claim 28. There is no teaching in the specification to support this claim language. Though para. [0020] recites this limitation, no further details are given with regards to the shape, how the shape is determined, or in what manner the “... effects of attraction, rotation or repulsion of a uniform external magnetic field of 1.5 Tesla ...” are minimized. Additionally, one having ordinary skill in the art of horology would be unable to determine the “particular shape”, or the method by which this shape could be determined based on the disclosure provided.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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 these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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 limitations recite sufficient structure to perform the claimed function so as to avoid 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.
Claim 28 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 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.
Regarding claim 28, which recites the limitation “said first ferromagnetic internal mobile has a particular shape arranged to minimise the effects of attraction, rotation or repulsion of a uniform external magnetic field of 1.5 Tesla”. As discussed above in the claim interpretation of claim 28 under 35 USC § 112(f), though the specification recites the limitation, there are no further details are given with regards to the shape, how the shape is determined, or in what manner the “... effects of attraction, rotation or repulsion of a uniform external magnetic field of 1.5 Tesla ...” are minimized. Based upon the disclosure as presented, a reduction of these ‘effects’ is insufficient to meet either the description in the specification or the claimed limitation wherein these effects are minimized.
Thus, due to the lack of disclosure of sufficient means or method for determination of minima, the limitations of claim 28 fails the written description requirement.
Claim 28 is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without criteria or methods needed to determine the “particular geometric shape”, which is critical or essential to the practice of the invention but not included in the claim. See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
The following is an excerpt from the Manual of Patent Examining Procedures (MPEP) § 2164:
2164.01(a) Undue Experimentation Factors [R-01.2024]
In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is "reasonable" or is "undue." Consistent with Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), the Wands factors continue to provide a framework for assessing enablement in a utility application or patent, regardless of technology area. See Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024). These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Regarding claim 28, which recites the limitation “said first ferromagnetic internal mobile has a particular shape arranged to minimise the effects of attraction, rotation or repulsion of a uniform external magnetic field of 1.5 Tesla”. As discussed above with regards to the written description requirement, claim 28 recites claim limitations not supported by the specification. Further, it fails the test of enablement under the Wands factors listed above. Specifically, the pertinent Wands factors are, at least: (D) The level of one of ordinary skill; (F) the amount of direction provided by the inventor; and (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Minimization is a combined physical and mathematical optimization process which requires a specific formula, based on the type and method of minimizations required, in order to find the necessary theoretical minima. Once the theoretical minima are calculated, the minimization is tested in practice to correlate the mathematical model to the actual results. This is not an ordinary process in the art of horology. Additionally, this determination of the minimization against the effects of “attraction, rotation or repulsion” in a complex electromagnetic field involving a uniform field, the effect of the field upon the ferromagnetic mobile, and the interactions of the field and mobile with an arrangement of smaller magnets of unknown strength is well beyond the skill level of one having ordinary skill in the art of horology (Wands factor D). As such, any limitation requiring determination of minimized effects requires both a minimization formula and a method by which the results are evaluated to be provided in the disclosure. The disclosure of the instant application fails to provide any guidance for one making the disclosed invention to arrive at the desired minimization (Wands factor F). Thus, one desiring to make the disclosed invention would need to perform numerous, unguided, experiments in order to determine a) the minima within the interacting magnetic fields, b) the strength of the magnets required to allow the tool and mobile to interact with sufficient force to accomplish the adjustments while preventing undesirable interactions with the combined electromagnetic fields and c) the resulting placements of the magnets on both the adjusting tool and the internal mobile (Wands factor H).
Thus, claim 28 fails the test of enablement and is therefore rejected under 35 USC 112(a) for lack of enablement. As the disclosure presented fails to enable the limitation wherein “said first ferromagnetic internal mobile has a particular shape arranged to minimise the effects of attraction, rotation or repulsion of a uniform external magnetic field of 1.5 Tesla”, the limitation must be removed from the claim set.
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 23-44 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 23, which recites in part “... said elastic return means being arranged to supply on its own the desired torque to ensure adjustment”. There is insufficient support in the specification or claims regarding the use of the term ‘torque’ with reference to the elastic return means, which is described in both the specification and claims as acting in an axial direction. Additionally, the term “ensure” does not appear in the specification, and thus fails to provide any means or indication for how the return means would affect or ensure an adjustment.
This may be an artifact of the translation of the application into English. Based on a close reading of the specification, specifically para. [0039] which states in part “Rotation of the adjustment tool 200 has a reluctant effect on the arms of the ferromagnetic cross 1, causing rotation of the internal stage.”, it appears that this phrasing may be referring to the adjustment tool rather than the elastic return means as providing the torque. Another possibility is that the word “torque” is a mistranslation, and that “force” is the intended meaning in English. This reading based upon para. [0038] of the specification, which states, in part, “... a spring forms the elastic return means 5, visible in plan view in Figure 3 in a particular embodiment of the spiral spring, and which keeps this clutch pinion away from its position of coupling with a second internal mobile 7, which herein includes a driven plate coupled, in the movement, to the function to be performed ...”. However it is unclear to the examiner at the time of this office action which of these readings is the correct interpretation of the claim limitation.
For the purposes of compact prosecution, the word “torque” will be interpreted to mean “force”.
Claim 23 also recites the phrase “arranged to supply on its own the desired torque to ensure adjustment” in ln 17-18. The term “desired” in claim 23 is a relative term which renders the claim indefinite. The term “desired” 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. Additionally, the phrase “the desired torque” lacks antecedent basis for such a limitation in the claim.
Further, claim 23 recites the limitation "said watchmaking assembly" in ln. 2. There is insufficient antecedent basis for this limitation in the claim. This rejection may be easily overcome by changing the word “watchmaking” to “horological” to agree with the preamble of the claim and provide antecedent basis for this limitation.
Additionally, claim 23 recites “said first ferromagnetic internal mobile” in ln. 7. There is insufficient antecedent basis for this limitation in the claim. This rejection may be easily overcome by removing the word “ferromagnetic” from the limitation to agree with the phrase “a first internal mobile (ln. 2-3)” and provide antecedent basis for this limitation.
Claims 24-44, which depend from claim independent claim 23 fail to resolve the above noted issues, and are likewise rejected under 35 USC § 112(b).
Regarding claim 29, which recites the limitation "the largest radius" in ln. 3. There is insufficient antecedent basis for this limitation in the claim. This rejection may be easily overcome by replacing the word “the” with the word “a”.
Regarding claim 30, which recites “wherein said element is a component made of non-magnetic material”. Claim 23, upon which claim 30 depends, makes reference to two separate structures referred to by the term "element”, “an element of said case” and “a first drive element”. It is unclear to which element this limitation is directed. This rejection may be overcome by amending the claim to specify which of the aforementioned elements is “said element”. Based on a reading of the claims and specification, and for the purposes of compact prosecution, the term element in claim 30 will be examined as being the “element of said case”. However, in the case that this is not the applicant’s desired interpretation, clarification would in itself follow from an amendment to the claim specifically identifying the element to which the limitation is directed, thus overcoming the rejection.
Regarding claim 41, which recites the limitation "the casing" in ln. 2. There is insufficient antecedent basis for this limitation in the claim. This rejection may be easily overcome by changing the word “casing” to “case” to align with the terminology used in independent claim 23.
Regarding claim 42, which recites the limitation "its casing" in ln. 2. There is insufficient antecedent basis for this limitation in the claim. This rejection may be easily overcome by changing the word “casing” to “case” to align with the terminology used in independent claim 23.
For the purposes of compact prosecution, the claims will be examined as if the above suggested edits have been made with the exception of claim 30 due to the indefinite reference made by “said element”, which will be interpreted as addressed above.
Potentially Allowable Subject Matter
Claim 23 is rejected under 35 USC § 112(b) for indefiniteness and lack of antecedent basis for claim terminology. As best understood by the examiner, claim 23 contains subject matter which is potentially allowable over the prior art, provided that the required corrections to the claims to overcome the objections and rejections as detailed in this office action, including removal from the claims any unsupported subject matter, are made.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Paratte – US 20170351219 – Timepiece Mechanism with Adjustable Inertia Balance Wheel – Discloses various embodiments of a balance assembly for a timepiece which is adjusted through the case using a ‘magnetic key’ adjustment tool.
Marechal – US 20170115628 – Self-Winding Mechanism for Watches – Discloses a device for recharging a mechanical or electrical energy accumulator via magnetic coupling with an internal mobile through the case of the timepiece.
Willemin – US 9836207 – Winding Device for Self-winding Automatic Watch – Discloses an alternative implementation of a through-case winding device for self-winding watches using cooperating magnets for recharging an electrical and/or mechanical power source in the timepiece.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J WALKER whose telephone number is (571)270-7599. The examiner can normally be reached from 8:00 AM - 4:00 PM ET Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Regis Betsch can be reached at (571) 270-7101. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL JAMES WALKER/ Examiner, Art Unit 2844
/REGIS J BETSCH/ SPE, Art Unit 2844