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 .
Drawings
The drawings are objected to because:
The “stud-holder”, reference character “1”, is not indicated in the drawings.
Fig. 1, element 20, “flexure bearing”, indicates the “secondary body” which is indicated by reference character “33” rather than the flexure bearings.
The arrow for reference character “6” in fig. 1-3 uses multiple arrows to indicate the “prestressing means”. As per 37 CFR 1.84: “Arrows may be used at the ends of lines, provided that their meaning is clear, as follows: (1) On a lead line, a freestanding arrow to indicate the entire section towards which it points; ...” Thus a single freestanding arrow is sufficient to designate the entire “prestressing means” including the components thereof.
The drawings must show every feature of the invention specified in the claims. Fig. 1-3 indicate a generic ‘actuator’ (7) with no identifying operational features. Therefore, the screw (claim 11) and the cam (claim 12) must both be shown or the features canceled from the claim(s).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The language should be clear and concise and should not repeat information given in the title. The form and legal phraseology often used in patent claims, such as “said,” (ln. 5) should be avoided.
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 limitation is limited by the description in the specification when 35 U.S.C. 112(f) 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):
(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” 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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
Claim 1 recites “adjusting means for adjusting its rigidity”. This phrase is not being interpreted under 35 USC § 112(f), as sufficient structure is recited within the claim.
Claim 1 further recites “prestressing means for applying a variable force or torque” in ln. 9-10. This phrase is being interpreted under 35 USC § 112(f). Support for this terminology is found in the specification, para. [0042]-[0044], which recite the structure for the prestressing means. Thus, the term “prestressing means” is being interpreted as the structure described in para. [0042]-[0044].
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 1-15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 1, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation following the phrase “having a rigidity higher than that of the strip” is a part of the claimed invention. For the purposes of compact prosecution, the claims will be examined as if the phrase “the flexible element preferably having a rigidity higher than that of the strip” has been removed from the claim language. Claim 1 further recites the limitation "the adjusting means" in ln. 5 and 9. There is insufficient antecedent basis for this limitation in the claim.
Claim 3, recites the term “substantially in a first direction.” This is indefinite because it is unclear as to the complete scope of the directions in which the lever may move. For this Office action, the claim will be examined as if the term “substantially” has been removed from the claim.
Claim 3 also recites the phrase "preferably" which renders the claim indefinite because it is unclear whether the limitation following the phrase “circular” is a part of the claimed invention. For the purposes of compact prosecution, “preferably circular” has not been considered.
Claim 4 recites the term “substantially in a second direction”. This renders the claim indefinite as it is unclear as to the complete scope of the directions in which the flexure bearing prevents movement. For the purposes of compact prosecution, the claim will be examined as if the term “substantially” has been removed from the claim.
Claim 10 uses “it” in ln. 1. This renders the claim indefinite as it is unclear what “it” references. For the purposes of compact prosecution, the claims will be examined as if the phrase “it” is in reference to the horological assembly.
Claim 14 recites the phrase “thanks to the prestressing means” in ln. 2. This is informal language and does not clearly describe a relationship.
Allowable Subject Matter
Claims 1-15 appear to be allowable, if rewritten or amended to overcome the objections to the drawings and claims detailed above and the rejections under 35 U.S.C. 112(b) set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J WALKER whose telephone number is (571)270-7599. The examiner can normally be reached from 8:00 AM - 4:00 PM ET Monday through Friday.
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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/MICHAEL JAMES WALKER/Examiner, Art Unit 2831
/renee s luebke/Supervisory Patent Examiner
Art Unit 2831
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