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 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 Fleury (US 20120120776).
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.
Fleury teaches a device for determining a magnetic event ([0010]), a magnetic sensor ([0010]), a magnetic event reporting module ([0010]), and a control unit for managing operation of the reporting module and magnetic sensor ([0023] and [0026]).
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 Fleury’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 Fleury’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 Fleury includes the same limitations (‘179 recites a light source that, in combination with Fleury, 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 Fleury 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 Fleury.
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.
Fleury teaches a device for determining a magnetic event ([0010]), a magnetic sensor ([0010]), a magnetic event reporting module ([0010]), and a control unit for managing operation of the reporting module and magnetic sensor ([0023] and [0026]).
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 Fleury’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 Fleury’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 Fleury 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 § 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 1-18 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.
Regarding claim 1, the phrase "such a dial" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of examination, “such a dial comprises” has been read as -the dial comprising-.
Claim 1 recites “the functional elements” in line 5 without antecedent basis. For the purposes of examination, “the functional elements included in said device” has been read as -functional elements included in said device, the functional elements being-.
Claim 1 recites “the operation” in the penultimate line without antecedent basis. The limitation has been read as -operation-.
Claims 6-7 and 10 recite “said first layer” and “the first layer” without antecedent basis. The limitations have been read as -a first layer-.
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 1, 4-8, 10-11, and 13-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fleury (US 20120120776).
Regarding claim 1, Fleury teaches (Fig. 2) a dial for a watch comprising a standalone device for determining a magnetic event ([0010]: “compass”), such a dial comprises 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 these two faces, each of said layers comprising one or more of the 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 the operation of said reporting module and said at least one magnetic sensor. Motor 30 drives the sensor and module ([0023]).
Regarding claim 4, Fleury teaches 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 teaches (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 teaches 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 teaches 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 teaches 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 10, Fleury teaches (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 teaches 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 13, Fleury teaches (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 teaches (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 teaches (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 teaches 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 teaches 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]).
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 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Fleury.
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 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.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Fleury in view of Martin et al. (US 20170102672).
Regarding claim 2, Fleury discloses the dial according to claim 1.
Fleury does not show that said at least one magnetic sensor comprises a REED magnetic sensor, a Hall-effect sensor and/or a magnetoresistance sensor.
Martin teaches a magnetic sensor comprising a REED magnetic sensor ([0019]).
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 Fleury’s sensor for Martin’s sensor. One of ordinary skill in the art would have been motivated to make this substitution as an equivalent solution for detecting magnetic events.
Regarding claim 3, Fleury discloses the dial according to claim 1.
Fleury does not show that the magnetic event reporting module comprises: at least one element capable of generating a light signal; at least one element capable of generating a vibration signal, and/or at least one element capable of generating an audible signal.
Martin teaches a magnetic event reporting module comprising at least one element capable of generating an audible signal ([0019]: “the REED switch…actuates the electronic sound generator”).
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 Fleury’s reporting module for Martin’s reporting module. One of ordinary skill in the art would have been motivated to make this substitution so that a user can be automatically alerted to check/fix their watch without needing to manually check.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yuen (US 20170185048) discloses a dial of watch comprising a light source ([0002]).
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
Prosecution Insights