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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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 (US 20140301168). Regarding claim 1, ‘818 recites the same limitations of claim 1 except for a standalone device for transmitting a message to an electronic device, a message transmission activation sensor, a light source, and a control unit for managing operation of the light source and activation sensor.
‘818 recites an autonomous device (semantically equivalent to standalone device) for determining and reporting an event relating to a defect in water-resistance of a watch (which is a form of transmitting a message to an electronic device), a control module for checking the watch’s water-resistance (which is a form of a message transmission activation 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 dial comprising a light source in a layer of the dial ([0019]: “light sources 20…are also housed within the thickness of the dial 4”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used Fleury’s light source as ‘818’s module for reporting a water-resistance defect event, so that ‘818’ teaches a standalone device for transmitting a message to an electronic device, a message transmission activation sensor, a light source, and a control unit for managing operation of the light source and activation sensor. One of ordinary skill in the art would have been motivated to make this substitution so that a user could be actively alerted or reminded.
Claims 5-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-15 and 17-19, respectively, of copending Application 18/954,818 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. 18/918,580 in view of Fleury. Regarding claim 1, ‘818 recites the same limitations of claim 1 except for a standalone device for transmitting a message to an electronic device, a message transmission activation sensor, a light source, and a control unit for managing operation of the light source and activation sensor.
‘580 recites a standalone device for determining and reporting a magnetic event (which is a form of transmitting a message to an electronic device), a magnetic sensor (which is a form of a message transmission activation sensor), a magnetic event reporting module, and a control unit for managing operation of the reporting module and the sensor.
Fleury teaches a dial comprising a light source in a layer of the dial ([0019]: “light sources 20…are also housed within the thickness of the dial 4”).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have used Fleury’s light source as ‘818’s magnetic event reporting module, so that ‘580 teaches a standalone device for transmitting a message to an electronic device, a message transmission activation sensor, a light source, and a control unit for managing operation of the light source and activation sensor. One of ordinary skill in the art would have been motivated to make this substitution so that a user could be actively alerted or reminded.
Claims 5-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-18, respectively, of copending Application 18/918,580 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 Objections
Claim 2 is objected to because of the following informalities: "activation sensor configured to generate" is idiomatically incorrect and should be -activation sensor is configured to generate-. Appropriate correction is required.
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 are part of the claimed invention. Whether claim is reciting that the dial recited in line 1 will contain the limitations following “such a dial” is unclear. Whether These two dial recitations refer to the same dial or different dials is also unclear. See MPEP § 2173.05(d). The limitation “such a dial comprises” has been read as -the dial comprising-.
Regarding claim 1, “one or more of the functional elements comprised in said device” in line 5 lacks antecedent basis. The limitation has been read as -one or more functional elements comprised in said device, the functional elements being-.
Claim 1 recites “the operation” without antecedent basis in the penultimate line. The limitation has been read as -operation-.
Claim 4 recites “the information” in line 3 without antecedent basis. The limitation has been read as -information-.
Claims 7-8 and 11 each recite “said first layer” without antecedent basis. The limitation has been read as -a first layer-.
Claim 11 recites “the photovoltaic module” in line 3 without antecedent basis. The limitation has been read as -a photovoltaic module-.
Claim 11 recites “said second layer” in line 4. There is insufficient antecedent basis for this limitation. The limitation has been read as -a second layer-.
Claims 14-15 both recite “a hidden face.” Whether this limitation refers to the earlier hidden face or a new one is unclear. The limitation has been read as -the hidden face-.
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 1-3 and 5-15 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Fleury (US 20140301168) in view of Wu (CN 203606632).
Regarding claim 1, Fleury discloses (Figs. 2, 5) a dial (4) for a watch comprising a standalone device (20) for transmitting a message to an electronic device ([0019]: the device transmits hour messages to the watch, which is electronic), the dial comprising a visible face (top side of 4) and a hidden face (underside of 4), said dial being formed by a stack of thin layers of material (4, 38, 24, 30) extending between these two faces, each of said layers comprising one or more functional elements comprised in said device, the functional elements being: at least one light source (20); a standalone electric power supply unit (24); and a control unit (24, 38) for managing operation of said at least one light source (20).
Fleury does not show a functional element being a message transmission activation sensor, and the control unit managing operation of the activation sensor.
Wu teaches a dial of a watch comprising a standalone device for transmitting a message to an electronic device ([0029] in translation: a module receives data to transmit messages to the watch, which is an electronic device), a layer of the dial comprising a message transmission activation sensor ([0029]: inside a control unit, a sensor receives data), and the control unit managing operation of the activation sensor ([0029]).
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 standalone device, activation sensor, and control unit instructions operating the sensor with Fleury’s dial. One of ordinary skill in the art would have been motivated to make this combination so that a user can be notified or reminded of important messages ([0029] of Wu).
Regarding claim 2, Fleury in view of Wu discloses the dial according to the claim 1, wherein said at least one activation sensor ([0029] of Wu) configured to generate at least one electrical signal towards the control unit triggering the transmission of the message to the electronic device. When the activation sensor receives data from the standalone device, the control unit will process the data and cause a vibration or sound alarm ([0029] of Wu), thereby transmitting a message to the electronic device and wearer.
Regarding claim 3, Fleury discloses the dial according to claim 1, wherein said at least one light source is a punctual light source. The light source punctually lights up when powered by the power supply unit ([0021]).
Regarding claim 5, Fleury in view of Wu discloses the dial according to claim 1, wherein the stack of thin layers of material comprises a first layer provided with the visible face (top side of 4 in Figs. 2, 5) of the dial and comprising said activation sensor ([0029] of Wu: “the watch face 10 includes a…module for receiving data…a control module for processing the data”) and said at least one light source (20 in Figs. 2, 5 of Fleury).
Regarding claim 6, Fleury in view of Wu discloses the dial according to claim 1, wherein the activation sensor is arranged in the visible face of the dial ([0029] of Wu: “the watch face 10 includes a…module for receiving data…a control module for processing the data”).
The combination of Fleury and Wu does not show that said activation sensor is arranged in a cavity formed in the hidden face of this dial.
Fleury teaches cavities of the dial (44 in Fig. 5) being in a hidden face section ([0025]: the plane of 18 is partially hidden so that a solar cell 18 is not visible).
One of ordinary skill in the art would recognize that Fleury’s hidden face and visible face are both locations of the dial.
Accordingly, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Fleury in view of Wu’s dial so that the activation sensor is in a cavity of the hidden face. One of ordinary skill in the art would have been motivated to make this modification to preserve the watch’s aesthetic appearance by hiding undesirable structures. The courts have also ruled that absent any criticality, changing the location of the activation sensor is only an obvious modification a person having ordinary skill in the art would have found obvious to provide before this invention’s effective filing date since there is no invention in shifting position if operation of a device would not be thereby modified. See In re Japikse, 86 USPQ 70 (CCPQ 1950) and MPEP 2144.04.VI.
Regarding claim 7, Fleury discloses the dial according to claim 1, wherein a first layer (top layer in Figs. 2, 5) is configured to be crossed in whole or in part by light radiation, in particular solar radiation. Paragraph [0019] discloses a photovoltaic cell disposed as one of the layers in the stack of layers, so solar radiation must cross the first layer to energize the cell.
Regarding claim 8, Fleury discloses the dial according to claim 1, wherein a first layer (top layer of 4 in Figs. 2, 5) is wholly or partly transparent or translucent. Paragraph [0019] discloses a photovoltaic cell disposed as one of the layers in the stack of layers, so a first layer must be at least translucent to permit solar radiation to energize the cell.
Regarding claim 9, Fleury discloses (Fig. 5) the dial according to claim 1, wherein the stack of thin layers of material includes a second layer (layer of 18) comprising a photovoltaic module (18) making up the standalone electric power supply unit.
Regarding claim 10, Fleury discloses the dial according to claim 1.
Fleury does not disclose in Fig. 5’s embodiment that the second layer comprises a substrate on which the photovoltaic module is printed.
Fleury teaches in another embodiment a photovoltaic module printed on a substrate ([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 printed Fleury’s photovoltaic module in Fig. 5 on a substrate, as taught by Fleury in [0028]. One of ordinary skill in the art would have been motivated to use this technique as a known solution for successfully and predictable constructing a photovoltaic module in a watch.
Regarding claim 11, Fleury discloses the dial (Fig. 5) according to claim 1, wherein a first layer (layer above 18) is configured to be crossed in whole or in part by light radiation ([0019]), in particular solar radiation, the photovoltaic module being arranged on an active area of a second layer, said area being configured to receive light radiations originating from the first layer of the stack of thin layers of material ([0019]).
Regarding claim 12, Fleury discloses the dial according to claim 1, wherein the stack includes a third layer comprising an electrical energy accumulator making up the standalone electric power supply unit ([0019]). The photovoltaic module 18 accumulates electrical energy.
Regarding claim 13, Fleury discloses the dial according to claim 1, wherein the stack includes a third layer comprising an electrical energy accumulator making up the standalone electric power supply unit ([0019]). The photovoltaic module 18 accumulates electrical energy.
Fleury does not disclose in Fig. 5’s embodiment that the third layer comprises a substrate on which the electrical energy accumulator is printed.
Fleury teaches in another embodiment an electrical energy accumulator printed on a substrate ([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 printed Fleury’s accumulator in Fig. 5 on a substrate, as taught by Fleury in [0028]. One of ordinary skill in the art would have been motivated to use this technique as a known solution for successfully and predictable constructing an accumulator in a watch.
Regarding claim 14, Fleury discloses the dial according to claim 1, wherein the stack includes a fourth layer forming the hidden face of the dial comprising the control unit. In Fig. 5, 24 and 38 are disposed on an underside of the dial and thereby form a fourth layer that is a hidden face.
Regarding claim 15, Fleury discloses (Fig. 5) the dial according to claim 1, wherein the stack includes a third layer comprising the hidden face of the dial including the control unit (24, 38) and an electrical energy accumulator (38) making up the standalone electric power supply unit. 24 and 38 are disposed on an underside of the dial and thereby form a fourth layer that is a hidden face.
Regarding claim 17, Fleury discloses the dial according to claim 1, wherein said visible and hidden faces are flat or domed (Fig. 5).
Regarding claims 18-19, Fleury discloses a watch comprising a mechanical horological movement and the dial according to claim 1 ([0002], [0004]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Fleury in view of Wu as applied to claim 1, and further in view of Nakagawa (US 20120140601).
Regarding claim 4, Fleury in view of Wu discloses the dial according to claim 1.
The combination of Fleury and Wu does not show that said control unit is configured to control said at least one light source by controlling blinking thereof according to the information included in said message.
Wu teaches a sound/vibration sensor that activates according to information included in the message ([0029]).
Nakagawa teaches blinking a light source according to information from a message ([0021]).
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 Nakagawa’s blinking light source with Fleury’s dial and light source. One of ordinary skill in the art would have been motivated to make this combination so that a user may be visually notified of important information without needing to manually check their watch ([0021] of Nakagawa).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Fleury in view of Wu as applied to claim 1, and further in view of Zhang (US 201900227494), Van Haaften et al. (US 4015422) and Thelusma (US 20200266655).
Regarding claim 16, Fleury in view of Wu discloses (Fig. 5) the dial according to claim 1, comprising a first layer (top layer of 4 and [0019]) and other layers (layer with 18, layer with 38).
The combination of Fleury and Wu is silent regarding a first layer being rigid compared to other layers in the stack of thin layers of material, which are soft.
Zhang teaches a rigid first layer of a dial ([0002]: a “dial made of copper”).
Van Haaften teaches a soft second layer (col. 4, line 44: “flexible printed circuit board”).
Thelusma teaches a soft 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 soft 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) teaches an electronic watch with a dial that lights up ([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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/MATTHEW DANIEL HWANG/ Examiner, Art Unit 2831
/EDWIN A. LEON/ Primary Examiner, Art Unit 2831
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