2021000576 (P.T.A.B. May. 11, 2021)

Nivarox-FAR S.A.

Patent Trials and Appeals BoardMay 11, 2021

2021000576 (P.T.A.B. May. 11, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/651,295 07/17/2017 Christian CHARBON 504610US 2240 22850 7590 05/11/2021 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER KAYES, SEAN PHILLIP ART UNIT PAPER NUMBER 2844 NOTIFICATION DATE DELIVERY MODE 05/11/2021 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 iahmadi@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 CHRISTIAN CHARBON, ALEXANDRE FUSSINGER, and MARCO VERARDO ________________ Appeal 2021-000576 Application 15/651,295 Technology Center 2800 ________________ Before JOHNNY A. KUMAR, JASON J. CHUNG, and MATTHEW J. McNEILL, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection of claims 1–4 and 6–15.2 We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was conducted on May 4, 2021. We will add a transcript to the record in due course. We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, Nivarox-Far S.A. is the real party in interest. Appeal Br. 1. 2 Claim 5 is cancelled. Appeal Br. i (Claims Appendix). Appeal 2021-000576 Application 15/651,295 2 INVENTION The invention relates to enhancing security of payment transactions. Spec. 2:11–12. Claim 1 is illustrative of the invention and is reproduced below: 1. A pivot arbor for a timepiece movement comprising: a plurality of sections have different diameters, which define bearing surfaces and shoulders arranged between two end portions, and at least one metal pivot at at least one of said end portion, wherein said pivot has a conical shape, wherein the metal is a non-magnetic aluminium alloy so as to limit the sensitivity of the pivot to magnetic fields, wherein at least the outer surface of said pivot is deep-hardened to a predetermined depth relative to the core of the pivot arbor, and wherein the non-magnetic aluminium alloy is chosen from the group consisting of an aluminium- copper-lead alloy, an aluminium-silicon-magnesium-manganese alloy, and an aluminium-zinc-magnesium-copper alloy. Appeal Br. i (Claims Appendix). REJECTIONS The Examiner rejects claims 1, 3, 4, 6–11, and 13–15 under 35 U.S.C. § 103 as being unpatentable over the combination of Von Gruenigen ‘624 (US 2014/0198624 A1; published July 17, 2014), Stuut (US 2016/0040701 A1; issued Feb. 11, 2016), Kamiya (US 2010/0254227 A1; published Oct. 7, 2010), and Carlson (US 2,369,338; issued Oct. 6, 1943). Final Act. 3–10. The Examiner rejects claims 2 and 12 under 35 U.S.C. § 103 as being unpatentable over the combination of Von Gruenigen ‘624, Stuut, Kamiya, Carlson, and Von Gruenigen ‘625 (US 2014/0198625 A1; published July 17, 2014). Final Act. 10. Appeal 2021-000576 Application 15/651,295 3 ANALYSIS I. Relevant Law The correct inquiry for whether a reference is analogous art to the claimed invention is if (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem) (hereinafter First Prong); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention) (hereinafter Second Prong). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). In determining the field of endeavor, we look to the written description and claims, including the structure and function of the invention. Bigio, 381 F.3d at 1326. In order for a reference to be “reasonably pertinent” to the problem, it “logically would have commended itself to an inventor’s attention in considering his problem.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379–80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). II. First Prong - Stuut Is Not in the Same Field of Endeavor as the Claimed Invention The Examiner determines that Stuut is in the field of material sciences and, when a person having ordinary skill in the art at the time of the invention considers field of endeavor, a broad approach should be taken in the horology art. Final Act. 2 (citing Karapatis (US 8,050,149 B2; issued Nov. 1, 2011), Johnson (7,017,645 B2; issued Mar. 28, 2006), Gritti (US 8,348,496 B2; issued Jan. 8, 2013)). Moreover, the Examiner determines Stuut is analogous art because it is in the same field of endeavor as Von Gruenigen ‘624, Kamiya, and Carlson. Ans. 3–9. Appellant argues Stuut is non-analogous art because it pertains to Appeal 2021-000576 Application 15/651,295 4 connecting construction parts whereas the claimed invention concerns pivot arbors in timepieces. Appeal Br. 8–9; Reply Br. 2. In addition, Appellant argues Karapatis, Johnson, and Gritti do not demonstrate sufficiently that Stuut is in the same field of endeavor as the claimed invention because the Examiner is casting the field of endeavor improperly broadly. Appeal Br. 9. We agree with Appellant. As an initial matter, we note that the Examiner’s reasoning relies on the incorrect test when analyzing field of endeavor/analogous art under the First Prong. That is, the Examiner incorrectly compares Stuut with other cited references. The correct statement is that a reference “qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (emphasis added). Furthermore, we compare the present case’s written description and claims with Stuut. Bigio, 381 F.3d at 1326. Stuut teaches connecting construction parts to build trusses, lattice girders, or girders to build support frames, roof construction, staging, or stands. Stuut ¶¶ 2, 10. However, Stuut differs from the present case’s claimed subject matter and written description because the present case pertains to “a non-magnetic pivot arbor for a mechanical timepiece movement.” Spec. 1:9–12. We, therefore, disagree with the Examiner’s determination that Stuut is in the same field (i.e., material sciences) as the claimed invention because the Examiner’s determination is unreasonably broad such that the Examiner’s determination ends up swallowing the field of endeavor test. Compare Final Act. 2 (citing Karapatis, Johnson, Gritti), with Appeal Br. 8–9; compare Reply Br. 2, with Bigio, 381 F.3d at 1326. Because Stuut is not in the same field of endeavor as the claimed Appeal 2021-000576 Application 15/651,295 5 invention, we turn our attention to the Second Prong to determine whether Stuut is reasonably pertinent to the problem faced by the inventor. III. Second Prong: Stuut Is Not Reasonably Pertinent To the Problem Faced by the Inventor The Examiner determines Stuut is reasonably pertinent to Appellant’s problem being solved because Stuut’s disclosure pertains to weight reduction and similarly, weight reduction is a problem being solved in timepieces/horology. Ans. 6. Moreover, the Examiner determines that the problem being solved in Stuut is pertinent to the problems being solved in Von Gruenigen ‘624, Kamiya, and Carlson. Id. at 5–9; Final Act. 3–4. Appellant argues Stuut’s problem being solved concerns weight reduction, whereas the present case’s problem being solved pertains to choosing the correct mix of alloys to limit sensitivity to magnetic interference while improving material hardness to accommodate for wear and shock resistance in the horological industry. Appeal Br. 9 (citing Stuut ¶ 39; Spec. 1–4). We agree with Appellant. Similar to the Examiner’s deficient analysis stated in § II. supra, we note that the Examiner’s reasoning relies on the incorrect test when analyzing the reasonably pertinent to Appellant’s problem being solved prong of the analogous art test. That is, the Examiner incorrectly compares Stuut with other cited references. The correct statement is that a reference “qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention.” In re Klein, 647 F.3d at 1348 (emphasis added). Moreover, we determine whether a reference “logically would have commended itself to an inventor’s attention in considering his problem.” In re ICON Health & Fitness, Inc., 496 F.3d at 1379–80 (quoting In re Clay, 966 F.2d at 659). Appeal 2021-000576 Application 15/651,295 6 We note that the closest disclosure that appears to pertain to Stuut’s weight is Appellant’s statement that “[a]n aluminium alloy is an alloy containing at least 50% by weight of aluminium.” Compare Stuut ¶ 39, with Spec. 6:4–5. However, Appellant’s “weight” appears to pertain to the concentration of alloys rather than Stuut’s “weight,” which appears to pertain to making construction equipment lighter to carry. Compare Stuut ¶ 39, with Spec. 6:4–5. We also note that Stuut’s problem being solved concerns weight reduction, whereas the present case’s problem being solved pertains to choosing the correct mix of alloys to limit sensitivity to magnetic interference while improving material hardness to accommodate for wear and shock resistance in the horological industry. Compare Stuut ¶ 39, with Spec. 1–4. We, therefore, determine that Stuut logically would not have commended itself to an inventor’s attention in considering her or his problem. Accordingly, we do not sustain the Examiner’s obviousness rejection of: (1) independent claims 1, 9, 10, and 11; and (2) dependent claims 2–4, 6–8, and 12–15 under 35 U.S.C. § 103. Appeal 2021-000576 Application 15/651,295 7 CONCLUSION REVERSED Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4, 6– 11, 13–15 103 Von Gruenigen ‘624, Stuut, Kamiya, Carlson 1, 3, 4, 6– 11, 13–15 2, 12 103 Von Gruenigen ‘624, Stuut, Kamiya, Carlson, Von Gruenigen ‘625 2, 12 Overall Outcome 1–4, 6–15