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 and 3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/955,179 in view of Martin (US 20170102672).
Regarding claim 1, ‘179 recites the same limitations of claim 1 except for a device for determining a magnetic event, a magnetic sensor, a magnetic event reporting module, and a control unit for managing operation of the reporting module and magnetic sensor.
‘179 recites a device for transmitting a message, a message transmission activation sensor, a light source, and a control unit for managing operation of the light source and activation sensor.
Martin teaches a device for determining a magnetic event ([0019]), a magnetic sensor ([0019]), a magnetic event reporting module ([0019]: “electronic sound generator”), and a control unit ([0019]: “electronic control unit”) for managing operation of the reporting module and magnetic sensor ([0019], last sentence)).
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 Martin’s device for determining a magnetic event and magnetic sensor for ‘179’s device for transmitting a message and message transmission activation sensor. 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 Martin’s magnetic event reporting module and control unit instructions managing operation of the reporting module and magnetic sensor with ‘179’s light sensor and control unit. One of ordinary skill in the art would have been motivated to make these modifications so that a user can be alerted to when they are in a strong magnetic field and protect their watch.
Regarding claim 3, ‘179 in view of Martin includes the same limitations (‘179 recites a light source that, in combination with Martin, is used as a magnetic event reporting module).
Claims 4-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-19, respectively, of copending Application 18/955,179 in view of Martin because the claims recite the same limitations except for semantic differences.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/954,818 in view of Martin.
Regarding claim 1, ‘818 recites the same limitations of claim 1 except for a device for determining a magnetic event, a magnetic sensor, a magnetic event reporting module, and a control unit for managing operation of the reporting module and magnetic sensor.
‘818 recites an autonomous device for determining an event, a control module for checking a watch’s water-resistance (i.e., a sensor), a module for reporting a water-resistance defect event, and a control unit for managing operation of the reporting module and control module.
Martin teaches a device for determining a magnetic event ([0019]), a magnetic sensor ([0019]), a magnetic event reporting module ([0019]), and a control unit for managing operation of the reporting module and magnetic sensor ([0019], last sentence).
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 Martin’s device for determining a magnetic event, magnetic sensor, and control unit instructions managing operation of the reporting module and magnetic sensor for ‘818’s device for determining an event, control module for checking a watch’s water-resistance, and control unit instructions managing operation of the control module. 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 Martin’s magnetic event reporting module with ‘818’s module for reporting. One of ordinary skill in the art would have been motivated to make these modifications so that a user can be alerted to when they are in a strong magnetic field and protect their watch.
Claims 3-18 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-15 and 17-19 of copending Application 18/954,818 in view of Martin because the claims recite the same limitations except for semantic differences.
These are provisional nonstatutory double patenting rejections because the claims have not yet been patented
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Fleury (US 20120120776) in view of Martin et al. (US 20170102672).
Regarding claim 1, Fleury discloses (Fig. 2) a dial for a watch comprising a standalone device for determining a magnetic event ([0010]: “compass”), said dial comprising a visible face (top side) and a hidden face (bottom side), said dial being formed by a stack of thin layers of material (30, 20, 4, 28) extending between the two faces, each of said layers comprising one or more functional elements included in said device: at least one magnetic sensor ([0010]: “compass”), a magnetic event reporting module ([0010]: “compass”), a standalone electric power supply unit (18), and a control unit (30) for managing operation of said reporting module and said at least one magnetic sensor. Motor 30 drives the sensor and module ([0023]).
Fleury does not show the control unit being configured to determine the magnetic event by comparing a magnetic field detected by said at least one magnetic sensor with a threshold, and to drive the reporting module to report the magnetic event when the detected magnetic field exceeds the threshold.
Martin teaches a magnetic sensor ([0019]) such that a control unit ([0019]: “electronic control unit”) is configured to determine a magnetic event by comparing a magnetic field detected by said at least one magnetic sensor with a threshold ([0019], last sentence: when the field’s strength exceeds the threshold, a circuit closes and the control unit receives a signal representing detection of the field), and to drive a reporting module ([0019]: “electronic sound generator”) to report the magnetic event when the detected magnetic field exceeds the threshold ([0019], last sentence).
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 Martin’s magnetic sensor and reporting module for Fleury’s magnetic sensor and reporting module. 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 Martin’s control unit with Fleury’s dial. One of ordinary skill in the art would have been motivated to make these modifications as an equivalent and known solution for predictably detecting and automatically indicating magnetic events to a user.
Regarding claim 2, Fleury in view of Martin discloses the dial according to claim 1, wherein the at least one magnetic sensor comprises a REED magnetic sensor (Martin, [0019]).
Regarding claim 3, Fleury in view of Martin discloses the dial according to claim 1, wherein the magnetic event reporting module comprises at least one element capable of generating an audible signal (Martin, [0019], last sentence).
Regarding claim 4, Fleury discloses the dial according to claim 1, wherein the stack of thin layers of material comprises a first layer (cover shielding 28, Fig. 2) provided with the visible face of the dial and comprising said at least one magnetic sensor and said reporting module (28). The hand 28 of the compass is disposed on the visible face of the dial. It senses the magnetic field and points to the magnetic field, thereby reporting the existence and orientation of magnetic disturbances.
Regarding claim 5, Fleury discloses (Fig. 2) the dial according to claim 1, wherein said at least one magnetic sensor (30) is arranged in a cavity formed in the hidden face (bottom side) of this dial (4). The motor 30 that drives the compass needle 28 is obscured under the cell 18 and dial 4. The cavity is the hole formed in the dial to allow passage of the pipe 26. See [0023].
Regarding claim 6, Fleury discloses the dial according to claim 1, wherein said first layer (cover shielding 28) is configured to be crossed in whole or in part by light radiation, in particular solar radiation. Solar radiation must cross through the first layer of the dial to reach the photovoltaic cell 18.
Regarding claim 7, Fleury discloses the dial according to claim 1, wherein said first layer (cover shielding 28) is wholly or partly transparent or translucent. The photovoltaic cell 18 must receive light, which means the first layer must be at least translucent to allow light to pass through the first layer to reach the photovoltaic cell.
Regarding claim 8, Fleury discloses the dial according to claim 1, wherein the stack of thin layers of material includes a second layer comprising a photovoltaic module (18 in Fig. 2) making up the standalone electric power supply unit.
Regarding claim 9, Fleury discloses the dial according to claim 1, wherein the stack of thin layers of material includes a second layer comprising a photovoltaic module (18 in Fig. 2) making up the standalone electric power supply unit.
Fleury does not show in Fig. 2 the second layer comprising a substrate on which the photovoltaic module is printed.
Fleury teaches in another embodiment that a photovoltaic module is mounted on a substrate ([0028]: “photovoltaic cells 18 are…mounted on a substrate”).
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 Fleury’s substrate with the embodiment of Fig. 2. One of ordinary skill in the art would have been motivated to make this modification so that the photovoltaic module would be secured and provide electricity for the entire device.
Regarding claim 10, Fleury discloses (Fig. 2) the dial according to claim 1, wherein the stack of thin layers of material includes a second layer comprising a photovoltaic module (18) making up the standalone electric power supply unit, said photovoltaic module being arranged on an active area of said second layer, said area being configured to receive light radiations originating from the first layer (cover shielding 28) of the stack of thin layers of material. The photovoltaic module 18 is arranged below the first layer comprising 28, so light hitting 18 from above must pass through the first layer first. See Fig. 2 and [0023].
Regarding claim 11, Fleury discloses the dial according to claim 1, wherein the stack includes a third layer comprising an electrical energy accumulator (18 in Fig. 2) making up the standalone electric power supply unit. 18 accumulates energy on it ([0023]).
Regarding claim 12, Fleury discloses the dial according to claim 1, wherein the stack includes a third layer comprising an electrical energy accumulator (18 in Fig. 2) making up the standalone electric power supply unit. 18 accumulates energy on it ([0023]).
Fleury does not show in Fig. 2 the third layer comprising a substrate on which the electrical energy accumulator is printed.
Fleury teaches in another embodiment that a photovoltaic module is mounted on a substrate ([0028]: “photovoltaic cells 18 are…mounted on a substrate”).
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 Fleury’s substrate with the embodiment of Fig. 2. One of ordinary skill in the art would have been motivated to make this modification so that the photovoltaic module would be secured and provide electricity for the entire device.
Regarding claim 13, Fleury discloses (Fig. 2) the dial according to claim 1, wherein the stack includes a fourth layer (underside of 4, 18) forming a hidden face of the dial comprising the control unit (30).
Regarding claim 14, Fleury discloses (Fig. 2) the dial according to claim 1, wherein the stack includes a third layer comprising a hidden face (underside of 4, 18) of the dial including the control unit (30) and an electrical energy accumulator (circuitry of 18 connecting to 30) making up the standalone electric power supply unit. The cell 18 powers the reporting module/sensor, so circuitry must connect from 18 to the hidden face underneath 18 where the control unit is disposed.
Regarding claim 15, Fleury discloses (Fig. 2) the dial according to claim 1, wherein the first layer (cover shielding 28 and 28) is rigid compared to the other layers comprised in the stack of thin layers of material which are soft. Air disposed at the level of the layers of 30, 4, 18 is softer than the solid material of 28 and 28’s cover.
Regarding claim 16, Fleury discloses the dial according to claim 1, wherein said visible and hidden faces are flat. Fig. 2 shows that the top and bottom of the dial 4 are flat.
Regarding claim 17, Fleury discloses a watch comprising the dial according claim 1 ([0003]).
Regarding claim 18, Fleury teaches the watch according to claim 17, comprising a mechanical, electronic or electromechanical horological movement ([0002] and [0003]).
Response to Arguments
Applicant’s arguments with respect to the rejection of claim(s) 1 under 35 U.S.C. 102(a)(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. Due to Applicant’s amendments, secondary reference Martin has been cited in the new rejection of claim 1 under 35 U.S.C. 103 for teaching the new limitations regarding the control unit, magnetic sensor, and reporting module.
Examiner remarks that a compass may be considered a magnetic sensor for detecting magnetic events because strong magnetic fields will warp a compass’s orientation to deviate away from Earth’s magnetic field; this deviation amounts to detecting the existence of a magnetic event. A compass is also a reporting module because it points to (i.e., reports) the direction of an environment’s magnetic field. A motor driving a compass manages operation of the compass by allowing the compass to rotate and function.
Applicant remarks that claim 1 recites the “at least one magnetic sensor” and “magnetic event reporting module” as “separate functional elements.” However, this interpretation is not strictly claimed. The broadest, reasonable interpretation of claim 1 is that the sensor and reporting module are functional elements disposed in layers forming a dial; whether these functional elements are distinct and discrete, or possibly combined is not claimed.
Applicant argues that Fleury’s discrete compass elements are “not thin layers that together form the dial.” Applicant’s specification states ([0035]) that the dial is formed by layers 10-14 in Figs. 2, 4. These layers 10-14 are discrete elements put together to form a dial. Fleury’s discrete elements 30, 20, 4, and 28 are put together to form the watch’s visible face/dial, as seen in Fig. 2. They also exist across different planes, i.e., layers. Under the broadest reasonable interpretation in light of Applicant’s disclosure and usage, Fleury meets the claimed dial “formed by a stack of thin layers of material.”
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.
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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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/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2831
/EDWIN A. LEON/ Primary Examiner, Art Unit 2831
