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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore,
the watch from claims 16-30
the means of restraint from claim 16
the means of attachment from claim 16
means of restraint provided on a lower face of the removable golf ball marker from claim 25
at least one head from claim 28
computational electronic means and memory space, as well as means of connecting to a digital data network from claim 30
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to because the reference number must be legible and must measure at least 0.32 cm, see 37 CFR 1.84(p).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because the phrase “The present invention”, and the legal phraseology “comprising” and “means” should be avoided.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claims 16, 17 and 19 are objected to because of the following informalities:
Claim 16, line 2 “the first strand” should be - - a first strand - -.
Claim 16, line 6 “the position” should be - - a position - -.
Claim 17, line 2 “the mass” should be - - a mass - -.
Claim 17, line 5 “the first” should be - - the first translation direction - -.
Claim 19, line 4 “or, vice versa, the” should be - - or the - -.
Claim 19, line 4 “the unfolding buckle type” should be - - an unfolding buckle type - -.
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.
In claim 1 the limitation recited as “clamping means” appear to invoke 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) since it appears to meet the 3-prong analysis, where the means are magnets or guide rails.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 17 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 17 recites “the user” which is a positive requirement of the claim requiring a human being, or a human part thereof (i.e., the user), which constitutes non-statutory subject matter under 35 USC § 101.
Claim 18 is rejected as being dependent upon a rejected claim.
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 27 and 28 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.
The term “type” in claim 27 is a relative term which renders the claim indefinite. The term “type” 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. It is suggested to amend to - - unfolding buckle - -.
Claim 28 is rejected as being dependent upon a rejected claim.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 16-22, 26 and 29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Song (KR 2012-0063341, cited by applicant).
Regarding claim 16, Song discloses a watch comprising a bracelet having two strands and a buckle clasp system, the buckle clasp system comprising a first part adapted to be attached to the first strand and having means of restraint (end of the first strand), and a second part having means of attachment complementary to the means of restraint, for fixing the second part to the first part of the buckle clasp system, allowing to attach the bracelet to a user's wrist, the buckle clasp system further comprising a removable golf ball marker, adapted to mark the position of a golf ball on a golf course, the second part having a cover having an upper part having a thickness and a lower part, the cover comprising, arranged in the thickness of the upper part, a housing, the housing having a flat bottom corresponding to the lower part of the cover, the housing being configured to house the removable golf ball marker, the removable golf ball marker having a shape corresponding to the housing, the buckle clasp system also comprising clamping means (11, 31), the clamping means (11, 31) ensuring magnetic and/or mechanical clamping, configured to hold the removable golf ball marker in the housing (see annotated Fig. 3).
Regarding claim 17, Song discloses, wherein the clamping means comprise longitudinally arranged guide rails in the mass of the lower part of the cover, to guide the removable golf ball marker in translation, in a direction corresponding to a longitudinal axis of the bottom of the housing, so that, in a first translation direction, guide the removable golf ball marker into the housing and, in a second translation direction opposite to the first, allow extraction of the removable golf ball marker so that the user can grasp it (see annotated Fig. 3).
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Regarding claim 18, Song discloses, wherein the guide rails are carved into the mass of the lower part of the cover, on two side faces and opposite the housing, the rails being parallel to the longitudinal axis of the bottom of the housing, and the removable golf ball marker comprises matching grooves able to slide in the rails (see annotated Fig. 3).
Regarding claim 19, Song discloses, wherein the clamping means comprise two grooves and two corresponding lugs, the lugs having a mushroom shape, the two grooves being arranged on two parallel side faces of the cover, and the two lugs being provided on two parallel faces of the removable golf ball marker, or, vice versa, the two grooves being arranged on two parallel side faces of the golf ball marker, and the two lugs being provided on two parallel faces of the cover (see annotated Fig. 3).
Regarding claim 20, Song discloses, wherein the clamping means provide magnetic clamping (11, 31) of the removable golf ball marker in the housing and comprise at least one magnet (11) arranged at the bottom of the housing (see annotated Fig. 3).
Regarding claim 21, Song discloses, wherein the at least one magnet is offset from a median transverse axis of the bottom of the housing (see annotated Fig. 3).
Regarding claim 22, Song discloses, wherein the at least one magnet is aligned to a median transverse axis of the bottom of the housing (see annotated Fig. 3).
Regarding claim 26, wherein the housing has a profiled rectangular parallelepiped shape (see annotated Fig. 3).
Regarding claim 29, one of the strands of the bracelet, upstream of the housing, comprising a deflection rib adapted to deflect the removable golf ball marker when extracting it (see annotated Fig. 3).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 23 is rejected under 35 U.S.C. 103 as being unpatentable over Song (KR 2012-0063341, cited by applicant), in view of Deto et al. (US Patent No. 7,320,158).
Regarding claim 23, Song discloses the claimed invention except for the at least one magnet is embedded in resin.
However, Deto et al. teaches the at least one magnet is embedded in resin (see Col. 2, lines 51-53).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the magnets from Song, and embed the magnets in resin in order to protect the magnets as taught by Deto.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Song (KR 2012-0063341, cited by applicant), in view of Bohannon (US Patent No. 9,623,305).
Regarding claim 24, Song discloses the claimed invention except for the at least one magnet has an attraction force comprised between 240 g and 320 g.
However, Bohannon teaches the at least one magnet has an attraction force comprised between 240 g and 320 g (0.52 lbs. and 0.71 lbs.) (see Col. 5, lines 10-15).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to replace the magnets from Song with neodymium magnets in order to have a strong attraction force between magnets as taught by Bohannon.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Song (KR 2012-0063341, cited by applicant), in view of Trojan (US Publication 2017/0120119).
Regarding claim 25, Song discloses the claimed invention except for means of restraint, among a ball or a protrusion, provided at the bottom of the housing and cooperating with additional means of restraint provided on a lower face of the removable golf ball marker.
However, Trojan teaches means of restraint, among a protrusion (330), provided at the bottom of the housing and cooperating with additional means of restraint (490) provided on a lower face of the removable golf ball marker (see Fig. 2B).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the bottom of the housing and the lower face of the removable golf ball marker from Song, with a retention member and a retention mechanism as taught by Trojan in order to mechanically secure the removable golf ball marker in the housing.
Claims 27 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Song (KR 2012-0063341, cited by applicant), in view of Kawagoe (US Patent No. 6,944,916).
Regarding claim 27, Song discloses the claimed invention except for the buckle is of the unfolding buckle type, the second part of the buckle being mounted pivoting on the first part.
However, Kawagoe teaches the buckle is of the unfolding buckle type, the second part (5) of the buckle being mounted pivoting (7) on the first part (10) (see Fig. 1).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the buckle from Song with the second part being pivotal on the first part as taught by Kawagoe in order to facilitate to rerelease the buckle from the user.
Regarding claim 28, the combination of Song in view of Kawagoe discloses, wherein the second part of the buckle clasp system comprises a passage (12) for the first strand (1), at least one head (27) and means of releasing (20) the second part (5) with respect to the first part (10) (see Fig. 1).
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Song (KR 2012-0063341, cited by applicant), in view of Webb et al. (US Patent No. 9,980,539).
Regarding claim 30, Song discloses the claimed invention except for the watch comprising computational electronic means and memory space, as well as means of connecting to a digital data network.
However, Webb et al. teaches the watch comprising computational electronic means and memory space, as well as means of connecting to a digital data network (see Fig. 1 and Col. 1, lines 29-31). Smart watches inherently have computational electronic means and memory space, as well as means of connecting to a digital data network.
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the buckle clasp system from Song with a smart watch as taught by Webb in order to use it as a wearing device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOUIS A MERCADO whose telephone number is (571)270-5388. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason W. 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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/LOUIS A. MERCADO/
Examiner
Art Unit 3677
/JASON W SAN/SPE, Art Unit 3677