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 notes - 35 USC § 101
Claims 1-18 appears to be ELIGIBLE under 35 U.S.C. § 101. The claim integrates the mathematical processing (predicting machine determination) into a practical application of manufacturing inspection technology. The physical testing steps ([a] and [b]) are not mere data gathering - they constitute a novel inspection technique that improves upon prior art methods requiring balance coupling. The predictive determination in step [c] is applied to solve a technological problem in a particular field (timepiece spiral fabrication). Therefore, the claim is directed to a practical application that improves existing technology and is patent-eligible under Step 2A, Prong 2.
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 1-18 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.
With regards to claim 1, the term, "such as a resonance peak," is unclear if this is to be part of the recited invention. For examination, the examiner reads that this is a non-limiting example. Furthermore, the term, "predicting machine," is not clear, nor is this limitation in the watch- manufacturing art. Examiner has turned to the specification but cannot find any clarifying description of the predicting machine. Therefor, Examiner relies on context clues from paragraphs 43-46 assumes the predicting machine is some kind of processor which can execute some kind of machine-learning software to determine the stiffness or determine if the spring length should be changed, and is treated as such for examination. It is also unclear as to what and how “to determine if the balance spring or balance spring blank is affected by a defect” is being acquired, obtained, performed and / or via thru the alleged “predicting machine”, as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to what these limitations are, thus render the claim as indefinite.
With regards to claim 2, it is unclear as to what is being referred to as "a spectrum of vibratory frequencies of the balance spring” as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to what this limitation is, thus render the claim as indefinite.
With regards to claim 3, it is unclear as to what is being referred to as “at least two predetermined expected resonance frequencies” as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to how this limitation is to be obtained, thus render the claim as indefinite.
With regards to claim 4, it is unclear as to what is being referred to as “a defect modifying the expected resonance modes” as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to how this limitation is to be obtained, thus render the claim as indefinite.
With regards to claim 5, it is unclear as to what is being referred to as “preferably carried out at least partially” as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to how this limitation is to be obtained, thus render the claim as indefinite.
With regards to claim 6, it is unclear as to what is being referred to as “a measurement over time of a displacement amplitude or speed or acceleration” as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to how this limitation is to be obtained, thus render the claim as indefinite.
With regards to claim 7, it is unclear as to what is being referred to as " at least one point of the balance spring or balance spring blank in a direction perpendicular to the base plane” as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to how this limitation is to be obtained, thus render the claim as indefinite.
With regards to claim 8, it is unclear as to what is being referred to as "a step of identifying a resonance peak of the balance spring or balance spring blank as a function of a displacement amplitude or speed” as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to how this limitation is to be obtained, thus render the claim as indefinite.
With regards to claim 9, it is unclear as to what is being referred to as “the resonance frequency is identified” and “the resonance peak at half-height of the maximum value of the resonance peak”, as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to how these limitations are to be obtained, thus render the claim as indefinite.
With regards to claim 10, "for example by a neural network" is unclear. Exemplary language creates ambiguity and "for example" suggests neural network is optional, making claim scope unclear. Examiner reads, a neural network is not needed. It is also unclear as to what is being referred to as “predicting machine" as it is not clear, nor is this limitation in the watch- manufacturing art. Examiner has turned to the specification but cannot find any clarifying description of the predicting machine. Therefor, Examiner assumes the predicting machine is some kind of processor which can execute some kind of machine-learning software to determine the stiffness or determine if the spring length should be changed, and is treated as such for examination”, as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to how these limitations are to be obtained, thus render the claim as indefinite.
With regards to 11, it is unclear as to what is being referred to as “a preliminary step”, “taking into account the material of the balance spring or balance spring blank”, “adjusting a maximum amplitude”, “a frequency range of the predetermined frequency range as a function of the material of the balance spring or balance spring blank”, as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to how these limitations are to be obtained and function, thus render the claim as indefinite.
With regards to 12, it is unclear as to what is being referred to as “the frequency range extends over a frequency range from 0 Hz to 100 kHz, preferably from 0 Hz to 50 kHz, more preferably from 0 Hz to 40 kHz, and very preferably from 10 KHz to 35 KHz”, as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to how these limitation are to be obtained, thus render the claim as indefinite.
With regards to claim 13, it is unclear as to what is being referred to as "step consisting of identifying or isolating or reworking or discarding the balance spring or the balance spring blank" as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to how this limitation are to be obtained, thus render the claim as indefinite.
With regards to claim 14, it is unclear as to what is being referred to as “A/forming at least one balance spring or balance spring blank having dimensions within predetermined tolerances” and “B/testing the balance spring or the balance spring blank” as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to how these limitations are to be obtained, thus render the claim as indefinite. Claims 15 & 16 are depended therefrom claim 14.
With regards to claim 17, it is unclear as to what is being referred to as " forming balance springs or balance spring blanks” how is this process performed? “a vibratory excitation that varies over time in order to cover a predetermined frequency range” what is and how is this “vibratory excitation that varies over time in order to cover a predetermined frequency range” performed and how is this “predetermined frequency range” determined and by and under what conditions? “Supplying to the prediction machine” is this some input, code, process and how is this “supplying” being provided, as the DISCLOSURE OF THE INVENTION and the EMBODIMENT OF THE INVENTION fails to disclose and / or suggest as to how these limitations are to be obtained, thus render the claim as indefinite.
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.
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.
Claims 1-18 are 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(s) 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. Specifically, in light of the 112(b) rejection above, Claim 1's predicting machine is some kind of algorithm used to determine if the stiffness or determine if the spring length should be changed. However, no algorithm or other recited software can be found in the specification. Therefore, turning to the Wands factors, and considering the nature of the invention; the state of the prior art; the level of one of ordinary skill; and the direction providing by the inventor, Examiner contends that undue experimentation is required for POSITA to use this claimed process. The dependent claims are likewise rejected.
Double Patenting
The non-statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. A non-statutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on non-statutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a non-statutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ § § 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto- processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-17 are provisionally rejected on the ground of non-statutory double
patenting as being unpatentable over claims 1-18 of co-pending Application No. 18/261,472 now US PATENT No.: 12,663,760 B2 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because they merely reword the same invention in obvious ways and synonyms. For clarity, claim 1 of each application are overlayed and compared below, illustrating exactly how they are reworded in obvious manners.
With regards to Amendments to the Claims 1. (Original) A method for a balance spiral ring or a balance spiral ring blank arranged to form a balance spiral ring, the balance spiral being required to exhibit have at least one predetermined expected resonance frequency, the method including the following steps: a. -applying to the balance spiral ring or spiral ring blank, an excitation that varies over time in order to cover a predetermined frequency range, b. -identifying at least one characteristic of a resonance frequency of the balance spring or balance spring blank, such as a resonance peak, of or of response to the excitation over the predetermined frequency range, c. subjecting the resonance frequency characteristic identified in step b. to a prediction machine in order to determine if the balance spring or balance spring blank is affected by a defect.
The remaining claims are likewise similar and recite obvious variations and are likewise rejected.
This is a provisional non-statutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANCIS C GRAY whose telephone number is (571)270-3348. The examiner can normally be reached Monday-Friday 7am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephanie Bloss can be reached at 571-272-3555. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FRANCIS C GRAY/ Primary Examiner, Art Unit 2852
Prosecution Insights