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 .
Double Patenting
The nonstatutory 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 nonstatutory 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 nonstatutory 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 nonstatutory 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 the 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 1-5, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 18/810,969 (reference application) in view of Breuillot et al. (US 20150023142).
Regarding claims 1, 3-5, and 13, co-pending claims 1 and 7 contain semantic differences—the operating device and operating system, control member and control device, drive element and second drive element, and transmission member and first drive element are equivalent.
Co-pending claims 1 and 7 do not recite the drive element being configured to cooperate with an operating member to operate third and fourth functions of the watch.
Breuillot teaches (Figs. 2-3) a drive element (2.3) configured to cooperate with an operating member (4) of said device (1) in order to operate third and fourth functions of the watch. Figs. 2A-2D represent different configurations each corresponding to a function.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Breuillot’s operating member with claim 1’s device. One of ordinary skill in the art would have been motivated to make this combination to create a multifunctional watch that makes life more convenient for a user.
Regarding claim 2, co-pending claims 1 and 7 do not recite that the control member is displaced in a third control position for carrying out third and fourth functions of the watch.
Breuillot teaches a control member configured to be displaced axially relative to a longitudinal axis thereof between first, second and third control positions for carrying out the first, second, third and fourth functions of the watch. Figs. 2B-2D portray different control positions corresponding to at least four functions: winding, hand-setting, and “at least one additional function” (abstract).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Breuillot’s operating member with claim 1’s device. One of ordinary skill in the art would have been motivated to make this combination to create a multifunctional watch that makes life more convenient for a user.
These are provisional nonstatutory double patenting rejections.
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 8 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.
Claim 8 recites the limitation "the movable ring of the operating member" in lines 6-7. There is insufficient antecedent basis for this limitation in the claim because claim 8 previously only recites “a movable ring movably mounted in a casing ring” in lines 3-4. Whether these “movable rings” are the same ring is unclear because the former recitation does not establish that the movable ring is “of” another structure, only that it is mounted in a casing ring. The limitation has been read as -the movable ring
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 1-5, 14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Breuillot et al. (US 20150023142).
Regarding claim 1, Breuillot teaches (Figs. 2-3) an operating device (Fig. 2A) for a watch comprising a control member (1-2) mounted movably in a support piece (4) of this device (1), said support piece (case middle 4) being intended to be unmoving relative to a horological movement of the watch (case middles necessarily do not move so as to securely hold all other timepiece components), said control member (1-2) comprising:
a gripping element (1.1, 2.1),
a drive element (2.3) mounted such that it is rigidly connected to said gripping element (Fig. 3),
a transmission member (5, 1.3) capable of being rotated ([0020]) by said drive element, wherein, based on a rotation by said drive element, said transmission member (5, 1.3) is configured to cooperate:
with an actuating member for actuating a manual winding mechanism of the device ([0020]), capable of storing mechanical energy, in order to operate a first function of the watch, and
with a hand-setting member ([0019]) of the device in order to control a second function of the watch,
and wherein said drive element (2.3) is configured to cooperate with an operating member (4) of said device (1) in order to operate third and fourth functions of the watch (Figs. 2A-2D represent different configurations each corresponding to a function), and wherein the control member (1-2) including the drive element (2.3) rigidly connected to the gripping element (1.1, 2.1 are rigidly constrained inside 2.3) is configured to be displaced axially relative to a longitudinal axis of the control member between first, second and third control positions for carrying out the first, second, third and fourth functions of the watch. Figs. 2B-2D portray different control positions corresponding to at least four functions: winding, hand-setting, and “at least one additional function” (abstract).
Regarding claim 3, Breuillot teaches the device according to claim 1, wherein when the control member is placed in the first control position (Fig. 2B), a mechanical link is established between one end of the transmission member and the actuating member for transmitting, to said actuating member, a rotational motion of the control member in order to implement the first function of the watch ([0015]: “FIG. 2B shows a plan view of the control device and also a corresponding cross section along a line II-II indicated in the aforementioned plan view, the primary crown of the device being arranged in its first pulled position, allowing manual winding”).
Regarding claim 4, Breuillot teaches the device according to claim 1, wherein when the control member is placed in a second control position (Fig. 2C), a mechanical link is established between one end of the transmission member and the hand-setting member for transmitting, to said hand-setting member, a rotational motion of the control member in order to implement the second function of the watch ([0015]: “FIG. 2C shows a plan view of the control device and also a corresponding cross section along a line indicated in the aforementioned plan view, the primary crown of the device being arranged in its second or third pulled position, allowing hand-setting”).
Regarding claim 5, Breuillot teaches (Fig. 3) the device according to claim 1, wherein when the control member is placed in the first and second control positions, drive zones of the drive element (2.3) and of the transmission member (5, 1.3) respectively are joined together ([0033]: “piston 1.3…is inserted into the mobile tube 2.3”) to transmit a rotational motion from the gripping element to the transmission member. The functions are carried out by rotation of 2.3, which transmits its rotation to the transmission member (abstract).
Regarding claim 14, Breuillot teaches the device according to claim 1, wherein the first control position (Fig. 2C) is between the second (Fig. 2B) and third control positions (Fig. 2D).
Regarding claim 16, Breuillot teaches a watch comprising the operating device according to claim 1 ([0003]).
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 6-12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Breuillot in view of Sugimoto et al. (US 20240295854).
Regarding claim 6, Breuillot discloses the device according to claim 1.
Breuillot does not show that when the control member is placed in the third control position, a mechanical link is established between a free end of the drive element of the control member and a movable ring movably mounted in a casing ring of the operating member of said device, for transmitting, to said movable ring, a rotational motion of the control member in order to implement the third or fourth function of the watch.
Sugimoto teaches (Figs. 2-3) that when a control member (7) is placed in a third control position (Fig. 2), a mechanical link is established between a free end (73) of a drive element of the control member (7) and a movable ring (61) movably mounted in a casing ring (10) of an operating member (10) of an operating device (Fig. 2), for transmitting, to said movable ring (61), a rotational motion (abstract) of the control member (7) in order to implement third or fourth functions ([0039]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Sugimoto’s movable ring with Breuillot’s device. One of ordinary skill in the art would have been motivated to make this combination to create a watch with a helpful information display ([0039] of Sugimoto).
Regarding claim 7, Breuillot discloses the device according to claim 1, wherein when the control member is placed in the third control position (Fig. 2D), drive zones of the drive element (2.3) and of the transmission member (1.3) respectively are separated from each other to transmit a rotational motion from the gripping element (2.1) to the transmission member (2.7). See Figs. 2D-3: when 2.1 is pulled out, which separates a drive zone of 2.3 from a drive zone of 1.3 to engage 2.7.
Breuillot does not show that when the control member is placed in the third control position, a mechanical link is established between a free end of the drive element of the control member and a movable ring movably mounted in a casing ring of the operating member of said device, for transmitting, to said movablering, a rotational motion of the control member in order to implement the third or fourth function of the watch.
Sugimoto teaches (Figs. 2-3) that when a control member (7) is placed in a third control position (Fig. 2), a mechanical link is established between a free end (73) of a drive element of the control member (7) and a movable ring (61) movably mounted in a casing ring (10) of an operating member (10) of an operating device (Fig. 2), for transmitting, to said movable ring (61), a rotational motion (abstract) of the control member (7) in order to implement third or fourth functions ([0039]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Sugimoto’s movable ring with Breuillot’s device. One of ordinary skill in the art would have been motivated to make this combination to create a watch with a helpful information display ([0039] of Sugimoto).
Regarding claim 8, Breuillot discloses the device according to claim 1.
Breuillot does not show that when the control member placed in the third control position, a mechanical link is established between a free end of the drive element of the control member and a movable ring movably mounted in a casing ring of the operating member of said device, for transmitting, to said movable ring, a rotational motion of the control member in order to implement the third or fourth function of the watch, and the movable ring is configured to actuate mechanisms of the horological movement of the watch implementing said third and fourth functions.
Sugimoto teaches (Figs. 2-3) that when a control member (7) is placed in a third control position (Fig. 2), a mechanical link is established between a free end (73) of a drive element of the control member (7) and a movable ring (61) movably mounted in a casing ring (10) of an operating member (10) of an operating device (Fig. 2), for transmitting, to said movable ring (61), a rotational motion (abstract) of the control member (7) in order to implement third or fourth functions (the function of adjusting information display; [0039]) of a watch (Fig. 1) and the movable ring (61) is configured to actuate mechanisms (61, 6a) of a horological movement of the watch implementing said third and fourth functions. The third and fourth functions may be considered to be adjusting information display ([0039]) and providing tactile and visual confirmation for a user to know that the control member is working properly.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Sugimoto’s movable ring with Breuillot’s device. One of ordinary skill in the art would have been motivated to make this combination to create a watch with a helpful information display ([0039] of Sugimoto).
Regarding claim 9, Breuillot discloses the device according to claim 1.
Breuillot does not show that when the control member is placed in the third control position, a mechanical link is established between a free end of the drive element of the control member and a movable ring movably mounted in a casing ring of the operating member of said device, for transmitting, to said movable ring, a rotational motion of the control member in order to implement the third or fourth function of the watch. Sugimoto does not show that the casing ring comprises, on an inner peripheral wall, a cooperation zone for cooperation between the movable ring and the free end of the drive element, said cooperation zone comprising stop elements defining a course of travel of the movable ring mounted movable in the casing ring.
Sugimoto teaches (Figs. 2-3) that when a control member (7) is placed in a third control position (Fig. 2), a mechanical link is established between a free end (73) of a drive element of the control member (7) and a movable ring (61) movably mounted in a casing ring (10) of an operating member (10) of an operating device (Fig. 2), for transmitting, to said movable ring (61), a rotational motion (abstract) of the control member (7) in order to implement third or fourth functions (the function of adjusting information display; [0039]) of a watch (Fig. 1) and the casing ring (10) comprising, on an inner peripheral wall (inner left side of 10) thereof, a cooperation zone for cooperation ([0047]) between the movable ring (61) and the free end (73) of the drive element, said cooperation zone comprising stop elements (teeth of 61) defining a course of travel of the movable ring (61) mounted movably in the casing ring.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Sugimoto’s movable ring and cooperation zone with Breuillot’s device. One of ordinary skill in the art would have been motivated to make this combination to create a watch with a helpful information display ([0039] of Sugimoto).
Regarding claim 10, Breuillot discloses the device according to claim 1.
Breuillot does not show that when the control member is placed in the third control position, a mechanical link is established between a free end of the drive element of the control member and a movable ring movably mounted in a casing ring of the operating member of said device, for transmitting, to said movable ring, a rotational motion of the control member in order to implement the third or fourth function of the watch and the casing ring comprises a through-hole connecting together inner and outer peripheral walls of said casing ring, the through-hole including a zone for passing an actuating part of the drive element.
Sugimoto teaches (Figs. 2-3) that when a control member (7) placed in a third control position (Fig. 2), a mechanical link is established between a free end (73) of a drive element of the control member (7) and a movable ring (61) movably mounted in a casing ring (10) of an operating member (10) of an operating device (Fig. 2), for transmitting, to said movable ring (61), a rotational motion (abstract) of the control member (7) in order to implement third or fourth functions (the function of adjusting information display; [0039]) of a watch (Fig. 1) and the casing ring (10) comprises a through-hole (hole in which 71, 7 passes through) connecting together inner and outer peripheral walls (inside wall and outside wall of 10) of said casing ring, the through-hole including a zone (section where 71, 73 passes through) for passing an actuating part (73) of the drive element. See also Fig. 5.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Sugimoto’s movable ring and through-hole with Breuillot’s device. One of ordinary skill in the art would have been motivated to make this combination to create a watch with a helpful information display ([0039] of Sugimoto).
Regarding claim 11, Breuillot discloses the device according to claim 1.
Breuillot does not show that when the control member is placed in the third control position, a mechanical link is established between a free end of the drive element of the control member and a movable ring movably mounted in a casing ring of the operating member of said device, for transmitting, to said movable ring, a rotational motion of the control member in order to implement the third or fourth function of the watch and a passage zone comprises a central part configured for an arrangement of a main portion of an actuating part of the drive element in a through-hole and an eccentric part forming a passage allowing a coupling element of the actuating part to pass through a body of said casing ring.
Sugimoto teaches (Figs. 2-3) that when a control member (7) is placed in a third control position (Fig. 2), a mechanical link is established between a free end (73) of a drive element of the control member (7) and a movable ring (61) movably mounted in a casing ring (10) of an operating member (10) of an operating device (Fig. 2), for transmitting, to said movable ring (61), a rotational motion (abstract) of the control member (7) in order to implement third or fourth functions (the function of adjusting information display; [0039]) of a watch (Fig. 1) and a passage zone (74) comprises a central part (see image below) configured for arrangement (Fig. 5) of a main portion (71) of an actuating part (71) of the drive element (73) in a through-hole (hole of 10 fitting 71, 7) and an eccentric part (see image below) forming a passage allowing a coupling element (71) of the actuating part (71) to pass through a body (10) of said casing ring (10). See Fig. 5.
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It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Sugimoto’s movable ring and passage zone with Breuillot’s device. One of ordinary skill in the art would have been motivated to make this combination to create a watch with a helpful information display ([0039] of Sugimoto).
Regarding claim 12, Breuillot discloses the device according to claim 1.
Breuillot does not show that when the control member is placed in a third control position, a mechanical link is established between a free end of the drive element of the control member and a movable ring movably mounted in a casing ring of the operating member of said device, for transmitting, to said movable ring, a rotational motion of the control member in order to implement the third or fourth function of the watch and the movable ring comprises an element for actuating a pivoting element of the operating member configured to actuate a mechanism implementing the third or fourth function of the watch.
Sugimoto teaches (Figs. 2-3) that when a control member (7) is placed in a third control position (Fig. 2), a mechanical link is established between a free end (73) of a drive element of the control member (7) and a movable ring (61) movably mounted in a casing ring (10) of an operating member (10) of an operating device (Fig. 2), for transmitting, to said movable ring (61), a rotational motion (abstract) of the control member (7) in order to implement third or fourth functions (the function of adjusting information display; [0039]) of a watch (Fig. 1) and the movable ring (61) comprises an element for actuating (teeth of 61) a pivoting element (73) of the operating member (10) configured to actuate a mechanism (6, 6a) implementing the third or fourth function of the watch ([0039]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Sugimoto’s ring with Breuillot’s device. One of ordinary skill in the art would have been motivated to make this combination to create a watch with a helpful information display ([0039] of Sugimoto).
Regarding claim 15, Breuillot discloses the device according to claim 1, wherein a first drive zone is formed on an inner surface of the drive element (2.3) and a second drive zone is formed on an outer surface of the transmission member (5, 1.3). See image below.
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Breuillot does not show that when the control member is placed in a third control position in which a mechanical link is established between a free end of the drive element of the control member and a movable ring movably mounted in a casing ring of the operating member of said device, for transmitting, to said movable ring, a rotational motion of the control member in order to implement the third or fourth function of the watch.
Sugimoto teaches (Figs. 2-3) that when a control member (7) is placed in a third control position (Fig. 2), a mechanical link is established between a free end (73) of a drive element of the control member (7) and a movable ring (61) movably mounted in a casing ring (10) of an operating member (10) of an operating device (Fig. 2), for transmitting, to said movable ring (61), a rotational motion (abstract) of the control member (7) in order to implement third or fourth functions (the function of adjusting information display; [0039]) of a watch (Fig. 1).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have combined Sugimoto’s movable ring with Breuillot’s device. One of ordinary skill in the art would have been motivated to make this combination to create a watch with a helpful information display ([0039] of Sugimoto).
Response to Arguments
Applicant's arguments filed 2026-08-11 have been fully considered but they are not persuasive.
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., claim 1’s control member and gripping element being a single, monolithic body) are not recited in the rejected claim(s). Applicant argues that Breuillot discloses first and second crowns that are independently actuatable, and therefore does not have a “single control member ‘including the drive element rigidly connected to the gripping element.’” The control member being a “single” body is not claimed; the crowns are coaxially connected (Fig. 3) and rigidly constrained to only move within a coaxial drive element (2.3 in Fig. 3). Because the crowns are thusly connected and directly adjacent to one another, the crowns collectively form “a control device” (as described by Breuillot; see title, abstract). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). For these same reasons, the provisional double patenting rejections are maintained.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Laucella et al. (US 20080159081) discloses a multifunctional control element of a watch having four functions (Fig. 1, 1, 5a, 5).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew Hwang whose telephone number is (571)272-1191. The examiner can normally be reached M-F from 9:30-5:30 PT.
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, 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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/MATTHEW DANIEL HWANG/Examiner, Art Unit 2831
/EDWIN A. LEON/Primary Examiner, Art Unit 2831
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