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 .
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The included abstract discloses a method, but the invention is an apparatus. The abstract should be written to properly describe the invention.
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 4-5 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.
Claims 4-5 recite “a one-piece assembly,” but claim 1 already recites a one-piece assembly. Whether claims 4-5 refer to claim 1’s assembly or a new assembly is unclear. The limitations have been read as -the one-piece assembly-.
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 are rejected under 35 U.S.C. 103 as being unpatentable over Fawer et al. (GB 1057607) in view of Weed (US 20050152869).
Regarding claim 1, Fawer discloses (Figs. 1-3) a one-piece assembly of timepiece components comprising: a first component (1); and a second component (2, 3) configured to be bonded to the first component (page 1, line 84 to page 2, lines 1-4), wherein at least one of the first component and the second component (2, 3) is coated with epilame (shaded regions of 2, 3 and page 2, line 62), wherein an adhesive is located on a surface of at least one of the first component (1 and page 1, line 84 to page 2, lines 1-4) and the second component (8) to be bonded to one another, wherein an adhesion layer comprised of a primer composition is included on at least one of the first and second components in a localized joining area (8) of the first or second component, and wherein the primer composition is solidified. Page 2, lines 3-4 teach that the adhesion layer comprises gumlac (a form of shellac), which has a melting point of 167 F and is therefore solid during operational use of Fawer’s watch by a user (the gumlac must be solid to join and hold the two components together). See Gumlac.pdf and Shellac.pdf (under “Properties”).
Fawer does not show that a composition of the adhesive and the primer composition are different from each other.
Weed teaches a composition of an adhesive and a primer composition being different from each other ([0078]: “the primer adhesive may comprise a different type…the binder adhesive may comprise a different type”). Weed also teaches the primer composition being included on a second component ([0006]) and the adhesive on a surface of a first component ([0008]), so that the first and second components are joined together by the primer and adhesive being joined together ([0007]).
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 Weed’s primer composition with Fawer’s assembly so that the second component is joined to the adhesive, which joins to the primer composition, which joins to the first component, wherein the adhesive’s composition and primer composition are different, as suggested by Weed. One of ordinary skill in the art would have been motivated to make this combination to create a strong, long-lasting bond between the components so that the assembly does not fall apart.
Regarding claim 2, Fawer discloses (Figs. 1-3) the one-piece assembly of timepiece components according to claim 1, further comprising a joining part (8) that connects the joining areas of the first (1) and second components (2, 3). See Fig. 1.
Regarding claim 3, Fawer in view of Weed discloses the one-piece assembly of timepiece components according to claim 1, further comprising a joining part (Fawer, Figs. 1-3, 8), which is formed by a layer of adhesive (Fawer, pgs. 1:84 to 2:1-4) and a primer composition layer (Weed, [0006]).
Regarding claim 4, Fawer discloses (Figs. 1-3) the one-piece assembly of timepiece components according to claim 1, wherein: the first timepiece component is an escapement lever (1) and the second timepiece component is a lever pallet-stone (2).
Regarding claim 5, Fawer discloses a timepiece comprising the one-piece assembly of timepiece components according to claim 1. The assembly is of a watch (title), meaning it forms a part of a watch.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The new rejection cites Weed for teaching the adhesive and primer’s compositions being different.
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 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
