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.
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Claims 1-2 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/315,670 in view of Bravo (US 20190187618).
Regarding claim 1, co-pending claim 1 includes the same limitations except for the member comprising a balance bridge, the stud-holder rotating relative to the bridge, and the balance spring being mounted on the first and second studs.
Bravo teaches (Figs. 1, 3-4) a stud-holder (6) rotating relative to a balance bridge (12 and Figs. 3-4) and a balance spring (5) mounted on first and second studs (18, 8).
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 Bravo’s bridge and studs with ‘670’s member. One of ordinary skill in the art would have been motivated to make this combination to precisely adjust the balance spring’s oscillation rate to improve timekeeping.
Regarding claim 2, co-pending claim 1 includes the same limitations except for nominal differences (flexible vs. resilient element, ribbon vs strip, joined vs connected).
Regarding claim 12, although co-pending claim 1 does not recite the stud-holder being arranged on the balance bridge around a bearing on the balance staff, Bravo teaches (Figs. 1-2) a stud-holder (6) arranged on a balance bridge (12) around a bearing (28) on a balance staff (7).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arranged ‘670’s stud-holder on a bridge around a bearing on a staff. One of ordinary skill in the art would have been motivated to make this arrangement to protect the stud-holder from impacts.
Claims 3-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 18/315,670 in view of Bravo (US 20190187618).
Regarding claim 3, co-pending claim 10 includes the same limitations.
Regarding claim 4, co-pending claim 1 includes the same limitations.
Claim 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11, 13 and 12, respectively, of copending Application No. 18/315,670 in view of Bravo (US 20190187618).
Claims 8-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 18/315,670 in view of Bravo (US 20190187618).
Regarding claims 8-9, co-pending claim 5 includes the same limitations except for nominal differences (the first part is part of the stud-holder, so moving the first part moves the stud-holder).
Claims 10-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of copending Application No. 18/315,670 in view of Bravo (US 20190187618).
Regarding claim 10, co-pending claim 6 includes the same limitations.
Regarding claim 11, co-pending claim 6 does not recite the spring and stud-holder being in one piece.
Bravo teaches (Fig. 1) a spring (20) and a stud-holder (6) being one piece.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have made ‘670’s spring and stud-holder in one piece. One of ordinary skill in the art would have been motivated to make this construction to realize the arm’s purpose of moving the stud-holder.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arranged ‘670’s stud-holder on a bridge around a bearing on a staff. One of ordinary skill in the art would have been motivated to make this arrangement to protect the stud-holder and member from shocks.
Claim 13 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of copending Application No. 18/315,670 in view of Bravo.
Regarding claim 13, co-pending claim 14 includes the same limitations.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of copending Application No. 18/315,670 in view of Bravo.
Regarding claim 14, co-pending claim 15 includes the same limitations.
Claims 1-4 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/315,523 in view of Bravo (US 20190187618).
Regarding claim 1, co-pending claim 1 includes the same limitations except for the member comprising a balance bridge, the stud-holder rotating relative to the bridge, and the balance spring being mounted on the first and second studs.
Bravo teaches (Figs. 1, 3-4) a stud-holder (6) rotating relative to a balance bridge (12 and Figs. 3-4) and a balance spring (5) mounted on first and second studs (18, 8).
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 Bravo’s bridge and studs with ‘523’s member. One of ordinary skill in the art would have been motivated to make this combination to precisely adjust the balance spring’s oscillation rate to improve timekeeping.
Regarding claim 2, co-pending claim 1 includes the same limitations except for semantic differences (flexible vs. resilient element, ribbon vs strip, joined vs connected).
Regarding claim 3, co-pending claim 1 includes the same limitations.
Regarding claim 4, co-pending claim 1 includes the same limitations.
Regarding claim 12, co-pending claim 1 does not recite the stud-holder being arranged on the balance bridge around a bearing on the balance staff.
Bravo teaches (Figs. 1-2) a stud-holder (6) arranged on a balance bridge (12) around a bearing (28) on a balance staff (7).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arranged ‘523’s stud-holder on a bridge around a bearing on a staff. One of ordinary skill in the art would have been motivated to make this arrangement to protect the stud-holder and member from shocks.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of copending Application No. 18/315,523 in view of Bravo (US 20190187618).
Regarding claim 5, co-pending claim 11 includes the same limitations.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of copending Application No. 18/315,523 in view of Bravo (US 20190187618), and further in view of Kahrobaiyan (US 20220171336).
Regarding claim 6, co-pending claim 12 includes the same limitations except for the rigid structure being parallel.
Kahrobaiyan teaches (Fig. 29) a rigid structure (127) in parallel with a flexible element (5).
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13 of copending Application No. 18/315,523 in view of Bravo (US 20190187618).
Regarding claim 7, co-pending claim 13 includes the same limitations.
Claims 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 18/315,523 in view of Bravo (US 20190187618).
Regarding claims 8-10, co-pending claim 7 includes the same limitations except for the cam rotating and cooperating with the stud-holder to rotate the stud-holder, the stud-holder comprising an arm in contact with the cam to rotate the stud-holder, and a return spring exerting a spreading force between the stud-holder and the balance bridge.
Bravo teaches (Figs. 1-4) a cam (24) rotating/cooperating with a stud-holder (6) to rotate the stud-holder (Figs. 3-4), the stud-holder comprising an arm (16) in contact with the cam to rotate the stud-holder (Figs. 3-4), and a return spring (20) exerting a spreading force between the stud-holder and the balance bridge (12). See [0028].
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 Bravo’s cam, arm, and spring with ‘523’s member. One of ordinary skill in the art would have been motivated to make this combination to precisely adjust the rate of the balance spring to improve timekeeping precision.
Regarding claim 11, co-pending claim 7 does not recite the spring and stud-holder being in one piece.
Bravo teaches (Fig. 1) a spring (20) and a stud-holder (6) being one piece.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have made ‘523’s spring and stud-holder in one piece. One of ordinary skill in the art would have been motivated to make this construction to realize the arm’s purpose of moving the stud-holder.
Claims 13 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16 and 17, respectively, of copending Application No. 18/315,523 in view of Bravo as they include the same limitations.
Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/328,362 in view of Bravo (US 20190187618).
Regarding claim 1, co-pending claim 3 includes the same limitations except for the member comprising a balance bridge, the stud-holder rotating relative to the bridge, and the balance spring being mounted on the first and second studs.
Bravo teaches (Figs. 1, 3-4) a stud-holder (6) rotating relative to a balance bridge (12 and Figs. 3-4) and a balance spring (5) mounted on first and second studs (18, 8).
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 Bravo’s bridge and studs with ‘362’s member. One of ordinary skill in the art would have been motivated to make this combination to precisely adjust the balance spring’s oscillation rate to improve timekeeping.
Regarding claim 2, co-pending claim 3 includes the same limitations except for nominal differences (flexible vs. resilient element, stiffness vs rigidity, ribbon vs strip, linked vs connected).
Claims 8-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 18/328,362 in view of Bravo (US 20190187618).
Regarding claims 8-9, co-pending claim 7 includes the same limitations except for nominal differences (the first part is stated to be part of the stud-holder, so moving the first part moves the stud-holder).
Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 of copending Application No. 18/328,362 in view of Bravo (US 20190187618).
Regarding claim 10, co-pending claim 8 includes the same limitations.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
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 3, the “prestressing means for applying a variable force or torque” includes a lever and rigid structure ([0026]-[0027], and a secondary flexible blade ([0043]).
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 1-14 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.
Claim 1 recites the limitation "the rate" in line 5. There is insufficient antecedent basis for this limitation in the claim. The limitation has been read as -a rate-.
Claim 1 recites “the rate” in lines 10-11. There is insufficient antecedent basis for this limitation. The limitation has been read as -a rate-.
Claim 1 recites “the stiffness” in line 13. There is insufficient antecedent basis for this limitation. The limitation has been read as -a stiffness-.
Claim 4 recites “the displacement” in line 5. There is insufficient antecedent basis for this limitation. The limitation has been read as -a displacement-.
Claim 6 recites “the lever” in line 3. There is insufficient antecedent basis for this limitation. Claim 6 has been read as depending on claim 5.
Regarding claim 11, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Limitations following “preferably” are not being considered.
Claim 12 recites “the balance staff” in line 3. There is insufficient antecedent basis for this limitation. The limitation has been read as -a balance staff-.
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 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Guy (CH 704687).
Regarding claim 1, Guy discloses (Fig. 3) a regulating member for a horological movement comprising: an inertial mass, including a balance ([0039] of the translation); a balance spring (20); a balance bridge ([0024]: “plate”); and an index system for adjusting a rate of the balance spring, the index system comprising a stud-holder including a first stud (P, [0037]) on which the balance spring is mounted, wherein the balance bridge includes a second connection means (12, [0047]) on which the balance spring is also mounted, the stud-holder being rotatable relative to the balance bridge (P can move due to flexible element 10) in order to adjust the rate of the regulating member ([0020]).
Guy does not show the second connection means being a second stud.
Studs are known connection means ([0037] of Guy).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted Guy’s second connection means for a second stud. One of ordinary skill in the art would have been motivated to make this substitution as a known fixing means for attaching components together ([0047] of Guy).
Regarding claims 13-14, Guy discloses a timepiece comprising a horological movement comprising the regulating member according to claim 1 ([0001] and [0017]).
Claims 2-7 are rejected under 35 U.S.C. 103 as being unpatentable over Guy in view of Kahrobaiyan (US 20220171336).
Regarding claim 2, Guy discloses (Fig. 3) the regulating member according to claim 1, wherein the balance spring comprises a coiled ribbon (20) and means (P, 10, 12) for adjusting the stiffness of the balance spring, which means are provided with a flexible element (10) arranged in series with the coiled ribbon (Fig. 3), the second stud (12) being mechanically connected to the flexible element (Fig. 3).
Regarding claim 3, Guy discloses (Fig. 3) the regulating member according to claim 2, wherein the adjustment means comprise prestressing means (P, 10, 12) for applying a variable force or torque to the flexible element (10), the first stud (P) being mechanically connected to the prestressing means (P, 10, 12).
Guy does not show the prestressing means including a lever, rigid structure, and a secondary flexible blade.
Kahrobaiyan discloses (Fig. 29) prestressing means including a lever (124), a rigid structure (127), and a secondary flexible blade (119).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted Guy’s flexible element for Kahrobaiyan’s prestressing means. One of ordinary skill in the art would have been motivated to make this substitution to improve timekeeping precision ([0008] of Kahrobaiyan).
Regarding claim 4, Guy in view of Kahrobaiyan discloses (Fig. 3 of Guy, Fig. 29 of Kahrobaiyan) the regulating member according to claim 3, wherein the flexible element (51-52 in Fig. 29) and the prestressing means (5 in Fig. 29) are arranged between the first stud (P in Fig. 3) and the second stud (12 in Fig. 3), the first stud (P in Fig. 3/118 in Fig. 29) being movable relative to the second stud (12 in Fig. 3/117 in Fig. 29) to actuate the prestressing means, displacement of the first stud relative to the second stud modifying the stiffness of the balance spring. Displacement of the first stud changes the length of the flexible element, which modifies the effective spring constant of the balance spring.
Regarding claim 5, Guy in view of Kahrobaiyan discloses (Fig. 3 of Guy, Fig. 29 of Kahrobaiyan) the regulating member according to claim 4, wherein the prestressing means include a lever (124 in Fig. 29) connected to the flexible element (51-52 in Fig. 29), the first stud (P in Fig. 3/118 in Fig. 29being integral with a free end (125) of the lever. The lever and first stud are integral due to their direct, physical connection through the lever.
Regarding claim 6, Guy in view of Kahrobaiyan discloses (Fig. 29 of Kahrobaiyan) the regulating member according to claim 3, wherein the prestressing means include a rigid structure (127) arranged in parallel with the flexible element (51-52), the lever (124) being connected to the rigid structure (Fig. 29).
Regarding claim 7, Guy in view of Kahrobaiyan discloses (Fig. 3 of Guy, Fig. 29 of Kahrobaiyan) the regulating member according to claim 2, wherein the flexible element (51-52 in Fig. 29) is connected to a rigid support (117 in Fig. 29), the second stud (12 in Fig. 3) being integral with the rigid support (117 in Fig. 29).
Claims 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Guy in view of Bravo (US 20190187618).
Regarding claim 8, Guy discloses the regulating member according to claim 1.
Guy does not show the index system comprising a rotatable cam, the cam cooperating with the stud-holder to cause it to rotate.
Bravo teaches (Figs. 1 and 3-4) an index system comprising a rotatable cam (24), the cam cooperating with a stud-holder (6) to cause it to rotate. See Figs. 3-4 showing how arm 16 of 6 is driven by the cam to rotate 6, which moves stud 19 ([0026] and [0027]).
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 Bravo’s cam with Guy’s index system. One of ordinary skill in the art would have been motivated to make this combination to precisely and autonomously adjust the rate of the balance spring to maintain isochronism ([0007] of Bravo).
Regarding claim 9, Guy in view of Bravo discloses (Fig. 3 of Bravo) the regulating member according to claim 8, wherein the stud-holder (6) comprises an arm (16) in contact with the cam (24) to be able to rotate the stud-holder (Figs. 3-4).
Regarding claim 10, Guy discloses the regulating member according to claim 1.
Guy does not show the index system comprising a return spring exerting a spreading force between the stud-holder and the balance bridge.
Bravo teaches (Fig. 1) an index system comprising a return spring (20) exerting a spreading force between a stud-holder (6) and a balance bridge (12). See [0028].
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 Bravo’s return spring with Guy’s index system. One of ordinary skill in the art would have been motivated to make this combination so that the regulating member may be reset to default operating conditions to erase unwanted rigidity changes.
Regarding claim 11, Guy in view of Bravo discloses (Fig. 2 of Bravo) the regulating member according to claim 10, wherein the stud-holder (6) and the spring (20) are in one piece (Fig. 2 of Bravo).
Regarding claim 12, Guy discloses the regulating member according to claim 1, wherein the stud-holder is arranged on the balance bridge on the balance staff ([0004]).
Guy does not show that the stud-holder is also arranged around a bearing.
Bravo teaches (Figs. 1-2) a stud-holder (6) arranged around a bearing (28 and [0036]).
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 Bravo’s bearing with Guy’s member. One of ordinary skill in the art would have been motivated to make this combination to protect the member from shocks.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hessler (US 20150234356) discloses adjusting rigidity of an elastic return means to regulate a timepiece regulator’s frequency (title).
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/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2831
/renee s luebke/ Supervisory Patent Examiner
Art Unit 2831