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.
Claim 12 is 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 12, the phrase "notably" renders the claim indefinite because it is unclear whether the limitations following the phrase “by screwing” are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 1-5, 7, 8, 10-12, 14, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kaltenrieder, US 2020/0356060.
Regarding claim 1, Kaltenrieder discloses a wristwatch case comprising:
a sapphire crystal (3, [0017]) having an optical axis perpendicular or substantially perpendicular to a plane of the crystal (Fig 1a), and a load-reacting surface (5), wherein an interior surface (13) of the crystal bears against the load-reacting surface.
Kaltenrieder does not explicitly disclose wherein a ratio A2a/A1a is greater than or equal to 0.2, where A2a is the area of the load-reacting surface, and A1a is the area of the interior surface of the crystal.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the ratio A2a/A1a greater than or equal to 0.2, where A2a is the area of the load-reacting surface, and A1a is the area of the interior surface of the crystal because Kaltenrieder states “the watch is a diving watch, which must withstand high stresses due to the pressure difference between the inside of the watch and the water pressure in large depths underwater. As the contact surface between the middle part 2, the gasket 5, 5′ and the crystal 3 is quite large with this conical shape, there is a better transmission of stresses over a larger area, which is important to guarantee the water-resistance of the watch when diving deep underwater.” Additionally, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. It would have been obvious make the ratio greater than 0.2 for the purpose of reducing the stress on a small area as suggested by Kaltenrieder.
Regarding claim 2, Kaltenrieder discloses a sapphire crystal. The examiner notes that applicant is claiming the product (a sapphire crystal) including the process of making the product (Kyropoulos technique or by EFG method of crystal growth) and therefore claim 9 is of "product-by-process" nature. The courts have been holding for quite some time that: the determination of the patentability of a product-by-process claim is based on the product itself rather than on the process by which the product is made. In re Thorpe, 777 F. 2d 695, 227 USPQ 964, 966 (Fed. Cir. 1985); and that patentability of claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. Applicant has chosen to claim the invention in the product form. When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either on 35 U.S.C. section 102 or alternatively on 35 U.S.C. section 103 of the statute is eminently fair and acceptable. In re Brown, 459 F.2d 531, 535, 173 USPQ 685 and 688 (CCPA 1972). See MPEP $2113.
Regarding claim 3, Kaltenrieder discloses the load-reacting surface is at least partially inclined with respect to the main axis of the watch case (Fig 1a, 1b).
Regarding claim 4, Kaltenrieder discloses the wristwatch case comprises a case middle (2), and wherein the load-reacting surface is a surface of a load-reacting ring (5) distinct from the case middle.
Regarding claim 5, Kaltenrieder discloses the wristwatch case comprises a case middle (2) forming a flange, corresponding to a load-reacting ring (5) the load-reacting ring comprising the load-reacting surface.
Kaltenrieder does not explicitly disclose the load-reacting ring is formed as one piece with the case middle.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the load reacting ring formed as one piece with the case middle for the purpose of prevent water infiltration between them and because it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893). It is noted applicant has not disclosed any criticality for forming the two parts in one piece.
Regarding claims 7 and 17, Kaltenrieder discloses the load-reacting ring is made from a material having an offset yield strength Rp0.2 greater than or equal to 620 MPa [0025]-[0026].
Regarding claims 8 and 18, Kaltenrieder does not explicitly disclose the load-reacting ring is made of a material or materials selected from the group consisting of nitrogen-doped stainless steel, hardened steel, and ceramic. However, Kaltenrieder does disclose a Zirconium based alloy.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the load reacting ring formed of nitrogen-doped stainless steel, hardened steel, or zirconia for the purposes of high yield strength to withstand high pressures because Kaltenrieder states “the use of a material having very high mechanical properties (in particular the yield strength and elastic deformation) for the portion 5 of the gasket is necessary in order to prevent the plasticising thereof and ensure homogenisation of the stresses on the middle part when diving with the watch at large depths.” Additionally, 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 design choice. In re Leshin, 125 USPQ 416.
Regarding claims 10 and 19, Kaltenrieder discloses the wristwatch case comprises a back (4), and wherein the back is made from a material (Titanium [0018]) having an offset yield strength Rp0.2 greater than or equal to 1000 MPa ([0026)].
Regarding claim 11, Kaltenrieder discloses the back is made of a material or materials selected from the group consisting of titanium alloy and ceramic.
Regarding claim 12, Kaltenrieder discloses the back is attached to the case middle notably by screwing [0018], and wherein the back comprises a seal forming a watertight interface between the case middle and the back [0002].
Regarding claim 14, Kaltenrieder discloses a wristwatch comprising a watch case as claimed in claim 1.
Regarding claim 20, Kaltenrieder discloses the material or materials of the back is or are selected from the group consisting of α+β or β titanium alloy [0025].
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Kaltenrieder as applied to claim 1 above, and further in view of Rayotek NPL.
Regarding claim 15, Kaltenrieder does not explicitly disclose the crystallographic orientation of the sapphire crystal.
Rayotek discloses that the type C orientation is up to 20% stronger mechanically.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the sapphire crystal taught by Kaltenrieder be of the C-type orientation because Rayotek teaches it has the highest mechanical strength. Additionally, 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 design choice. In re Leshin, 125 USPQ 416.
Allowable Subject Matter
Claims 6, 9, 13 and 16 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON COLLINS whose telephone number is (571)270-3994. The examiner can normally be reached 9:30 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Luebke can be reached at 571-272-2009. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON M COLLINS/ Examiner, Art Unit 2831
/EDWIN A. LEON/ Primary Examiner, Art Unit 2831
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