Ex parte Perrot

Board of Patent Appeals and Interferences

Aug 31, 1999

08345813 (B.P.A.I. Aug. 31, 1999)

Application for patent filed November 22, 1994,1
entitled (as amended in Paper No. 6) "Timepiece Including
Fixation Device For An Element Added To A Frame," which claims
the foreign filing priority benefit under 35 U.S.C. § 119 of
Swiss Application 03 485/93-5, filed November 23, 1993.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
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Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte FRIEDRICH PERROT

Appeal No. 97-1330
Application 08/345,8131

ON BRIEF

Before THOMAS, BARRETT, and HECKER, Administrative Patent
Judges.
BARRETT, Administrative Patent Judge.
Appeal No. 97-1330
Application 08/345,813
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DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 1-10.
We reverse.
BACKGROUND
The invention is directed to a timepiece having an added
element which is detachably held on the frame of the timepiece
with a fixation device. The prior art used screws to hold on
added elements, such as a protective plate, but the
assembling, dismantling, and reassembling often resulted in
deterioration of the threads in the frame. The fixation
device overcomes these problems by using a fixation device
which rotates in the frame to secure the added element.
Claim 1 is reproduced below.
1. A timepiece comprising:
a frame;
a fixation means attached to the frame; and
an added element held on the frame in a detachable
manner by the fixation means;
said fixation means being able to rotate while
remaining at a constant height in relation to the frame
to enable said added element to be unlocked and released;
Appeal No. 97-1330
Application 08/345,813
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said fixation means having at least one bolt
anchored in the material of the frame and axially
immobilized in relation to the frame.
The Examiner relies on the following prior art:
Perrot 5,430,694 July 4, 1995
(filed June 22, 1993)
Hayashi et al. 2,257,461 January
13, 1993
(United Kingdom Patent Application, hereinafter '461)
Claims 1-10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over '461 and Perrot. The Examiner finds that
'461 "teaches all features claimed except for the various
shoulders" (Final Rejection, page 1). The Examiner concludes
that "[i]t would have been obvious to one of ordinary skill in
the art at the time the invention was made to adapt U.K.
Patent(461) to include claimed shoulders etc. as suggested by
Perrot in order to secured [sic] the member firmly or in the
alternative to provide Perrot with means to removably secure a
member as suggested by U.K. Patent(461)" (Final Rejection,
page 1).
We refer to the Final Rejection (Paper No. 7) and the
Examiner's Answer (Paper No. 13) (pages referred to as "EA__")
for a statement of the Examiner's position and to the Appeal
Appeal No. 97-1330
Application 08/345,813
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Brief (Paper No. 12) (pages referred to as "Br__") and the
Reply Brief (Paper No. 14) (pages referred to as "RBr__") for
Appellant's arguments thereagainst.
OPINION
Appellant argues that the Examiner has not attempted to
provide a motivation to combine the references (Br5): "He has
merely taken bits and pieces from two separate references
using Appellant's disclosure as a guide in an attempt to
arrive at the present invention without even attempting to
show motivation from the prior art as to why anyone of
ordinary skill would make such modifications." Appellant
further argues that '461 and Perrot are in conflict with one
another for three reasons (Br6-7):
First, '461 teaches an added element which is held on the
frame in a detachable manner (i.e., cover 14 may be
opened and closed), whereas the added element in Perrot
is not detachable (i.e., bridge 2 is permanently held on
the frame 1 by a rivet 34; see col. 6, lines 11-12).
Second, '461 teaches a fixation means (i.e., lock member
18) which rotates, whereas Perrot's fixation means (i.e.,
stud 34) does not rotate. Finally, Perrot's fixation
means remains at a constant height in relation to the
frame, whereas the fixation means of '461 does not.
The Examiner's statement of motivation (EA3) is
accurately summarized by Appellant at (c)(1) and (c)(2) at
RBr1. Basically, the Examiner states that the shoulder means
Appeal No. 97-1330
Application 08/345,813
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of Perrot would be used to prevent the lock member 18 in '461
from being pulled from its location and to keep it secured to
the frame. Appellant argues that '461 "already includes its
own shoulders (see Figs. 1 and 5), making the shoulders of
Perrot unnecessary" (RBr2) and that "[a] skilled artisan would
not modify the rivet of Perrot to include the removable
securing means of '461 because the rivet is clearly intended
to permanently, not temporarily, hold bridge 2 on the frame 1"
(RBr2).
We agree with Appellant's arguments. While the stud 34
in Perrot is very similar in appearance to the bolt in
Appellant's drawings, the Examiner errs in finding that the
only difference between the subject matter of claim 1 and '461
is the shoulders. The lock member 18 in '461 is spring biased
and does not "rotate while remaining at a constant height in
relation to the frame" as recited in claim 1. The rejection
does not address this difference. Perrot discloses a stud 34
which is riveted to the base plate 1 and the bridge 2 to
permanently fix the bridge to the base plate. Thus, Perrot
does not disclose securing a detachable member or rotating a
fixation element to allow a detachable element to be unlocked
Appeal No. 97-1330
Application 08/345,813
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and released. These are the three reasons advanced by
Appellant. The Examiner has failed to establish a prima facie
case of obviousness. The rejection of claims 1-10 is
reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART N. HECKER )
Administrative Patent Judge )
Appeal No. 97-1330
Application 08/345,813
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