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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/918,580 in view of Li (CN 108363290).
Regarding claim 1, copending claim 1 recites the same limitations except for a device for determining an event relating to a defect in a watch’s water-resistance, a control module for checking the watch’s water-resistance, a module for reporting a water-resistance defect event ([0043]), and a control unit for managing operation of said reporting and control module.
‘580 recites a device for determining an event, a sensor (semantically equivalent to a control module for checking a quantity), a reporting module, and a control unit for managing operation of the reporting module and sensor.
Li teaches a device for determining an event relating to a defect in a watch’s water-resistance ([0016] in translation), a control module for checking the watch’s water-resistance ([0016]), a module for reporting a water-resistance defect event, and a control unit for managing operation of the reporting module and 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 substituted Li’s device, control module, and control unit instructions managing the reporting module/control module for ‘580’s device, control module, and control unit instructions. 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 Li’s reporting module with ‘580’s reporting module. One of ordinary skill in the art would have been motivated to make these modifications so that a user can know when their watch’s structural integrity has been compromised and is at risk of water damage.
Claims 3-15 and 17-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending claims 3-18, respectively, of Application No. 18/918,580 in view of Li because the copending claims include the same limitations except for semantic differences.
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 Li (CN 108363290).
Regarding claim 1, copending claim 1 recites the same limitations except for a device for determining an event relating to a defect in a watch’s water-resistance, a control module for checking the watch’s water-resistance, a module for reporting a water-resistance defect event ([0043]), and a control unit for managing operation of said reporting and control module.
‘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.
Li teaches a device for determining an event relating to a defect in a watch’s water-resistance ([0016]), a control module for checking the watch’s water-resistance ([0016]), a module for reporting a water-resistance defect event, and a control unit for managing operation of the reporting module and 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 substituted Li’s device and control module for ‘179’s device, 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 Li’s reporting module and control unit instructions managing the reporting module/control module with ‘179’s light source and control unit instructions. One of ordinary skill in the art would have been motivated to make these modifications so that a user can know when their watch’s structural integrity has been compromised and is at risk of water damage.
Regarding claim 3, ‘179 in view of Li discloses a light source that, in combination with Li, reports water-resistance defect events.
Claims 4-15 and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending claims 5-19, respectively, of Application No. 18/955,179 in view of Li because the copending claims include the same limitations except for semantic differences.
These are provisional nonstatutory double patenting rejections because the claims aren’t 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 1-19 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 apply to the “dial of watch” recited in line 1, or whether the claim recites the limitations of “such a dial” as an example. See MPEP § 2173.05(d). For the purposes of examination, “such a dial” has been read as -the dial-.
Claim 1 recites “one or more of the functional elements” in lines 5-6. There is insufficient antecedent basis for this limitation. The limitation has been read as -one or more functional elements selected from a group included in said device comprising:-
Claim 1 recites “a water-resistance defect event” in line 9. There is ambiguous antecedent basis for this limitation. The limitation has been read as -the water-resistance defect event-.
Claim 1 recites “the operation” in the penultimate line without antecedent basis. The limitation has been read as -operation-.
Claims 6-7 recite “said first layer” without antecedent basis. Claims 6-7 have been read as depending on claim 4.
Claims 10 and 15 recite “the first layer” without antecedent basis. Claims 10 and 15 have been read as depending on claim 4.
Claim 15 recites “the other layers” without antecedent basis. The limitation has been read as -other layers-.
Claim 16/1 recite “the gaseous fluid” without antecedent basis. There is no clear meaning as to how claim 16 or claim 1 relate to a gaseous fluid because neither claim otherwise recites a gas or fluid. The claim is not being further considered.
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 1-2, 4-14, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Fleury (US 20120120776) in view of Li.
Regarding claim 1, Fleury discloses (Fig. 5) a dial of a watch ([0004]) comprising an autonomous device for determining an event (time), such a dial comprising a visible face (top face of dial) and a hidden face (bottom face), said dial being formed by a stack of thin layers (top face, bottom face, 38, 18, 24) of material extending between these two faces, each of said layers comprising one or more of functional elements selected from a group included in said device: a stand-alone power supply unit (4 in Fig. 2); and a control unit (38).
Fleury does not show or suggest the device determining an event relating to a defect in the water-resistance of the watch and the group further comprising: a control module for checking the watch’s water-resistance and a module for reporting a water-resistance defect event, so that the control unit manages the control module and reporting module.
Li teaches a device determining an event relating to a defect in the water-resistance of a watch ([0016]), a dial of the device comprising a control module for checking the water-resistance of the watch ([0040]), a module for reporting the water-resistance defect event ([0043]: the water-resistance value is displayed, so it reports all water-resistance events), and a control unit for managing the control module’s operation. A control unit must manage the connection between the reporting module and the control module to properly report and display water-resistance events.
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 Li’s control module, reporting module, and control unit instructions with Fleury’s dial. One of ordinary skill in the art would have been motivated to make this combination to communicate to a wearer the device’s water-resistance so that the wearer may know to repair the watch when the watch has a leak.
Regarding claim 2, Fleury in view of Li discloses the dial according to claim 1, wherein said control module comprises at least one humidity sensor ([0016] of Li).
Regarding claim 4, Fleury in view of Li discloses the dial according to claim 1, wherein the stack of thin layers of material comprises a first layer (Fleury, 4 in Figs. 2, 7-9) provided with the visible face of the dial, and the first layer comprising said control module (Li, [0040] and Figs. 1, 3) and said reporting module (Li, Fig. 3, 6b1).
Regarding claim 5, Fleury in view of Li discloses the dial according to claim 1, wherein said control module is provided with the visible face of the dial (Li, [0040] and Figs. 1, 3).
The combination of Fleury and Li does not show the control module arranged in a cavity formed in the hidden face of this dial.
Changing the location from the visible face to the hidden face, absent any criticality, is only considered to be an obvious modification that a person having ordinary skill in the art would have been able to provide before the invention’s effective filing date using routine experimentation since the courts have held that there is no invention in shifting position if the operation of the device is not thereby modified. See In re Japikse, 86 USPQ 70 (CCPQ 1950) and MPEP 2144.04.VI.
Regarding claim 6, Fleury discloses the dial according to claim 4, wherein said first layer is configured such that light radiation, in particular solar radiation, can fully or partially pass therethrough. Fleury discloses a photovoltaic cell (18 in Fig. 2), so light radiation must pass through the first layer to energize the cell.
Regarding claim 7, Fleury discloses the dial according to claim 4, wherein said first layer is wholly or partially transparent or translucent. Fleury discloses a photovoltaic cell 18 in Fig. 2), the first layer must be partially translucent to allow light to energize the 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) constituting the stand-alone power supply unit.
Regarding claim 9, Fleury discloses the dial according to claim 1.
Fleury does not show in the Fig. 2 embodiment the second layer comprising a substrate on which the photovoltaic module is printed.
Fleury teaches in another embodiment a substrate on which a photovoltaic module is printed ([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 Fleury’s substrate with the embodiment of Fig. 2. One of ordinary skill in the art would have been motivated to make this combination to secure the photovoltaic module so that it doesn’t fall or break.
Regarding claim 10, Fleury discloses the dial according to claim 4, wherein the stack of thin layers of material includes a second layer comprising a photovoltaic module (18 in Fig. 2) constituting the stand-alone power supply unit, said photovoltaic module being arranged on an active area of said second layer, said area being configured to receive light rays originating from the first layer of the stack of thin layers of material (these limitations must be true for the photovoltaic module to function).
Regarding claim 11, Fleury discloses the dial according to claim 1, wherein the stack includes a third layer comprising an electrical energy accumulator constituting the stand-alone power supply unit (24 in Fig. 5).
Regarding claim 12, Fleury discloses the dial according to claim 1, wherein the stack includes a third layer comprising an electrical energy accumulator (24 in Fig. 2) making up the standalone electric power supply unit.
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 an electrical energy accumulator 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 electrical energy accumulator would be secured and provide electricity for the entire device.
Regarding claim 13, Fleury discloses the dial according to claim 1, wherein the stack comprises a fourth layer forming the hidden face of the dial comprising the control unit (38 in Fig. 5).
Regarding claim 14, Fleury discloses the dial according to claim 1, wherein the stack comprises a third layer comprising the hidden face of the dial comprising the control unit (38 in Fig. 5) and an electrical energy accumulator constituting the stand-alone power supply unit (24 in Fig. 2).
Regarding claim 17, Fleury discloses the dial according to claim 1, wherein said visible and hidden faces are flat (Fig. 5).
Regarding claims 18-19, Fleury discloses a watch comprising the dial according to claim 1, wherein the watch has a mechanical movement ([0001]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fleury in view of Li, and further in view of Wu (CN 203606632).
Regarding claim 3, Fleury in view of Li discloses the dial according to claim 1.
The combination of Fleury and Li does not show the reporting module comprising: at least one element capable of generating a vibration signal.
Wu teaches a reporting module comprising an element generating a vibration signal ([0010] in translation).
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 Wu’s vibration-signal-generating element with Fleury’s reporting module. One of ordinary skill in the art would have been motivated to make this modification to ensure a wearer checks the device when necessary.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Fleury in view of Li, and further in view of Zhang (US 201900227494), Van Haaften et al. (US 4015422) and Thelusma (US 20200266655).
Regarding claim 15, Fleury in view of Li discloses the dial according to claim 4.
The combination of Fleury and Li is silent regarding the first layer being rigid compared to other layers in the stack of thin layers of material, which are flexible.
Zhang teaches a rigid first layer of a dial ([0002]: a dial made of copper”).
Van Haaften teaches a flexible second layer (col. 4, line 44: “flexible printed circuit board”).
Thelusma teaches a flexible third layer (abstract: “flexible solar panel”).
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 first layer dial material for Zhang’s rigid material and Fleury’s second layer control unit and third layer photovoltaic module for Van Haaften’s and Thelusma’s flexible control unit and photovoltaic module, respectively. One of ordinary skill in the art would have been motivated to make this substitution as known materials for constructing dials, control units, and photovoltaic modules that yield a functioning device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yuen (US 20170185048) discloses LED lights in a dial that light up to alert a user ([0040]).
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
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