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 .
Response to Arguments
Applicant's arguments filed 6/24/26 have been fully considered but they are not persuasive.Applicant’s argument with regard to claim 7 is found persuasive. Applicant’s argument with regard to claims 8 and 9 are not found to be persuasive. Applicant’s position and interpretation are understood and appreciated. However, in light of the specification and the product by process rules discussed in MPEP 2113 the examiner does not see a pathway capable of finding the arguments persuasive. The specification does not clearly set forth a structural feature of the breaking and thus the recitation in question as amended does not fairly inform the public of a clear or distinct structural limitation that would be precluded. The recitation/amendment distinguishes a process step, but not the result therefrom. See MPEP 2113 and the updated grounds of rejection regarding the limitation. For clarity no 112b rejection is made. The issue is merely one of breadth of the claim. In example formed by breaking in the opinion of the examiner is a clear and distinct limitation. But the specific method of breaking is simply not specified. I.e. the breaking could be done by bending, or using scissors, or cutting with a drill. There are a wide variety of breaking methods all with different structural results. Thus the claim is just afforded its broadest reasonable interpretation. MPEP 2111 discusses the topic of broadest reasonable interpretation.
Claim Rejections - 35 USC § 102
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 8-9 are rejected under 35 U.S.C. 102a1 as being anticipated by Daout (US 2007/0180943).
With regard to claim 8 Daout discloses a wheel for a timepiece generated by being cut from a plate-shaped member made of a brittle material (paragraph 35), the wheel for a timepiece comprising:
a plurality of teeth (figure 1), wherein
the plurality of teeth includes a tooth (1) that has a cut surface (5; paragraph 37), in a leading end portion (figure 1), that is formed when the wheel for a timepiece is cut from the plate-shaped member (structure does not occur naturally; paragraph 33 details forming methods).Claim 8 is amended 6/24/26 to include the limitation: the cut surface is located at a radial outermost end of the tooth and is formed by breaking a coupling portion that connects the leading end portion of the tooth to a frame portion.
Note applicant specification discussion on the subject. “In this case, the coupling portion 56 may break in the middle thereof or may damage the teeth 51. On the other hand, in the present embodiment, since the coupling portion 56 is coupled to the leading end portion of the tooth 51, breakage of the coupling portion 56 in the middle thereof or damage to the teeth 51 in the cutting process can be suppressed.”See MPEP 2113 product by process claims. Sub section I discusses “PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS”. In the current instance applicant’s disclosure states that any results of the breakage are suppressed. Thus the reasonably interpretation of the claim scope is breaking a coupling portion of the leading end does not necessitate a structural feature of the resulting product that those skilled in the art would be able to predict or understand. The feature is effectively a limitation of the process not of the resulting structure. If applicant’s position is that applying a breaking force results in a defect of the tooth head, then the method of breaking must be specified. Cutting with a laser, water, machining, or etching are all reasonable forms of breaking. Thus there is no reasonably way to infer a unique structural detail to the claim from this claim recitation that would be capable of distinguishing over Daout. Paragraph 35 laser cutting, and any material for water jet cutting. Forming by these methods would yield the same result differing only by method employed.
With regard to claim 9 Daout discloses a timepiece comprising: the wheel for a timepiece according to claim 8 (title, paragraphs 1, 8, 9, 11)
Allowable Subject Matter
Claims 1-7 allowed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN KAYES whose telephone number is (571)272-8931. The examiner can normally be reached 10-6.
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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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/SEAN KAYES/Primary Patent Examiner, Art Unit 2831
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