Ex Parte PETERS et al

Patent Trial and Appeal Board

Jul 27, 2018

13710737 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/710,737 12/11/2012 Jean-Bernard PETERS
22850 7590 07/31/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
408191US41 1624
EXAMINER
WICKLUND, DANIEL PM
ART UNIT PAPER NUMBER
2833
NOTIFICATION DATE DELIVERY MODE
07/31/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
OBLONPAT@OBLON.COM
tfarrell@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-BERNARD PETERS, LAURENT KAELIN,
IV AN VILLAR, and RAPHAEL BALMER 1
Appeal2016-007348
Application 13/710,737
Technology Center 2800
Before CARLA M. KRIVAK, DEBRA K. STEPHENS, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
1 This paper is captioned by inventor name according to our pre-AIA
convention. The Applicant/ Appellant and real party in interest is ETA SA
Manufacture Horlogere Suisse. (See App. Br. 1.)
Appeal 2016-007348
Application 13/710,737
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3-14, and 16-30, which are all of the pending claims. An oral
hearing was conducted on March 20, 2018. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application concerns a "[ m ]echanical timepiece movement ... in
the form of a modular unit." (Abstract.) Claim 1, reproduced below,
exemplifies the subject matter on appeal:
Claim 1: A mechanical timepiece movement in the form of a
modular unit, wherein said movement includes a plurality of
mechanical functional modules each performing a particular
timepiece function, said functional modules being irreversibly
adjusted prior to securing of adjustment and assembly
components comprised in said functional modules, wherein no
further adjustment of said functional modules is possible after
said adjustment and assembly components are irremovably
secured such that said functional modules cannot be dismantled
from said movement, and wherein each of said adjusted
functional modules is irremovably secured to a plate comprised
in said movement or comprised in another adjusted functional
module of said movement, or is irremovably secured to another
adjusted functional module comprised in said movement.
2
Appeal 2016-007348
Application 13/710,737
THE REFERENCES AND THE REJECTION
Claims 1, 3-14, and 16-30 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Born et al. (US 2010/0135126 Al; published June 3,
2010) and Erard (US 3,901,018; issued Aug 26, 1975). (See Final Act. 3-
18.2)
that
ANALYSIS
Claims 1, 27, and 28
The Examiner finds Born teaches the subject matter of claim 1, except
Born et al. does not specifically disclose a mechanical timepiece
movement wherein said functional modules are irreversibly
adjusted prior to securing of adjustment and assembly
components comprised in said functional modules, wherein no
further adjustment of said functional modules is possible after
said adjustment and assembly components are irremovably
secured such that said functional modules cannot be dismantled
from said movement, and wherein each of said adjusted
functional modules module is irremovably secured to a plate
comprised in said movement or comprised in another adjusted
functional module of said movement, or is irremovably secured
to another adjusted functional module comprised in said
movement.
(Final Act. 4.) Essentially, the Examiner finds that Born fails to disclose a
functional module that is "irreversibly adjusted prior to securing" and
"irremovably secured to a plate." The Examiner further finds, however, that
Erard discloses the irreversible adjusting and irremovably securing and that
2 A rejection of claims 27-30 under Section 112, as indefinite, was
withdrawn. (See Ans. 2.)
3
Appeal 2016-007348
Application 13/710,737
it would have been obvious to a person having ordinary skill in
the art at the time the invention was made to modify the securing
means of Born et al. to be irremovable ( e.g. welding, studs,
adhesive, etc.) as suggested by Erard because simply using an
irremovable securing means in place of another securing means
provides the predictable result that the functional modules will
be secured to the timepiece movement, especially when no
further adjustment to the module after it is secured is required for
the timepiece to work.
(Id. at 5.)
Appellant argues Erard does not describe a module that is irreversibly
adjusted prior to securing and irremovably secured to a plate. (See App. Br.
13-18.) We do not agree.
Erard describes a "regulating module" "which will have been
mounted and checked previously," and that in some embodiments may be
"be definitely and unremovably secured to the bottom 1 a of the cap 1, by
means of studs, or by welding or sticking for example." (Erard 4:7-10,
4:36-39.) Erard thus describes adjustment prior to assembly3 and
irremovable securing ( e.g., by welding). The remaining question is whether
the prior adjustment is "irreversible."
The Examiner finds Erard teaches the prior adjustment is irreversible
because Erard states that "'as a modification, the regulating module could
be provided with means permitting to adjust the timing of the watch,
3 Appellant acknowledged at the hearing that adjustment prior to assembly
was conventional. (See Transcript of March 20, 2018 Oral Hearing, at 6.)
The Examiner also finds that "an inherent feature of all functional modules
of timepiece movements is prior adjustment" because "[i]f the modules are
never adjusted before securing the module into the movement, the timepiece
itself would not function properly." (Final Act. 3.)
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Appeal 2016-007348
Application 13/710,737
permitting to act on the active length of the hair-spring' (i.e. the classical
screw)," that "Li Just because Erard decided to show this modification
including the classical screw in Fig. 6, does not mean that every embodiment
ofErard's disclosure includes this screw," and that "[o]n the contrary, Erard
teaches that the base invention would not include this classical screw
because it is a modification." (Ans. 5---6.) The Examiner further finds that
"[ e ]ven if the classical screw [adjustment] mechanism did exist in the
embodiment relied upon in the Office Action ... there is no clear tool access
[after assembly] for a person having ordinary skill in the art to adjust the
screw." (Id. at 6.)
We agree with the Examiner that the teaching of a regulating module
that "could be" provided with "means permitting to adjust the timing of the
watch" is sufficient to disclose an embodiment without such adjustment
means. This embodiment would not be not adjustable after assembly,
meaning that the adjustment prior to assembly would be "irreversible," as
claimed. Regarding the question of "clear tool access" in the embodiment in
which the adjustment screw is shown, we find Appellant's argument that the
screw could be reached not supported by adequate evidence and, thus,
insufficient to overcome the Examiner's finding that the screw would not
have been accessible. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence.").
For the above reasons, we agree that the combination of Born and
Erard teaches or suggests a module that is both irreversibly adjusted prior to
securing and irremovably secured. We therefore sustain the Section 103
rejection of claim 1, as well as the same rejection of claims 27 and 28, which
are argued on the same basis. We also sustain the rejection of claims 3, 4, 7,
5
Appeal 2016-007348
Application 13/710,737
10, 11, 13, 16, 17, 20, 23, 24, 26, 29, 30, for which no separate arguments
are presented.
Claim 14
Independent claim 14 is similar to claim 1, but also recites that the
regulating module is "irremovably secured to another adjusted functional
module comprised in said movement."
Appellant argues "Erard nowhere teaches or suggests that this
regulating module is also 'irremovably secured to another adjusted
functional module comprised in said movement."' (App. Br. 24.).
Appellants then assert the Examiner "does not explain how any of the cited
references teaches or suggests this additional feature." (Id., emphasis
omitted.) The Examiner responds that "Born discloses a plurality of
mechanical functional modules," that, for example, "Module A is secured to
Modules B-D," and that "it would have been obvious ... to modify the
securing means of Born et al. to be irremovable ... as suggested by Erard
because simply using an irremovable securing means (i.e. welds) in place of
another securing means (i.e. screws) provides the predictable result that the
functional modules will be secured to the timepiece movement, especially
when no further adjustment to the module after it is secured is required for
the timepiece to work." (Ans. 13.)
We agree with the Examiner (see Ans. 12-13) that Appellant is
arguing the references separately, instead of the combination formulated by
the Examiner, and, therefore, sustain the rejection of claim 14.
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Application 13/710,737
Claims 5, 6, 8, 9, 12, 18, 19, 21, 22, and 25
Dependent claims 5, 6, 8, 9, 12, 18, 19, 21, 22, and 25 recite a type of
functional module. For example claim 5 recites the functional module is a
motor module having a particular structure.
With respect to claim 5, Appellant argues the Examiner "simply
asserts that a 'module D' of Fig. 1 of Born is 'a motor module,"' but "neither
Born nor Erard provides any teaching or suggestion to make this 'module D'
as 'at least one of said adjusted functional modules,' which refers to the
'functional modules' in Claim 1 that are 'irreversibly adjusted prior to
securing of adjustment and assembly components comprised in said
functional modules."' (App. Br. 19, emphasis omitted.) Appellant offers
similar arguments for the other dependent claims.
We are not persuaded of error by Appellant's contentions. Appellants
merely state that neither Born nor Erard teach or suggest that any of these
modules is "irreversibly adjusted," which is the limitation recited in the
respective independent claims. (See App. Br. 19--28.) Appellants further
assert that "in addition to the above-noted deficiencies with respect to" the
respective independent claims, these claims "patentably define over the cited
references." (App. Br. 19--28.) However, as with the independent claims,
we find the combination of Born and Erard teaches or suggests irreversibly
adjusting or irremovably securing the modules. Appellants have not
provided sufficient evidence or argument to persuade us the Examiner's
combination fails to disclose the limitations of the dependent claims.
For these reasons, we sustain the Section 103 rejection of claims 5, 6,
8, 9, 12, 18, 19, 21, 22, and 25, all of which are argued on the same basis.
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Application 13/710,737
DECISION
The rejections of claims 1, 3-14, and 16-30 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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