Ex Parte Buhler et al

Patent Trial and Appeal Board

Apr 28, 2016

12408130 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/408,130 0312012009 Pierre-Andre Buhler
22850 7590 05/02/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
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.
465968US41 8659
EXAMINER
SAHNI, VISHAL R
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
05/02/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIERRE-ANDRE BUHLER, MARCO VERARDO,
THIERRY CONUS, JEAN-PHILIPPE THIEBAUD,
JEAN-BERNARD PETERS, and PIERRE CUSIN
Appeal2014-000106
Application 12/408,130
Technology Center 3600
Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and
JAMES J. MAYBERRY, Administrative Patent Judges.
MAYBERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pierre-Andre Buhler et al. (Appellants) seek our review under
35 U.S.C. § 134 of the Examiner's rejections of claims 1-12 and 21. An
oral hearing was held on April 21, 2016. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appeal2014-000106
Application 12/408,130
CLAIMED SUBJECT MATTER
The claims are directed to a one-piece double balance spring. Spec.
1 :2--4. Claim 1, reproduced below, is the sole independent claim and is
illustrative of the claimed subject matter:
1. A one-piece double balance spring, made from a three
layer silicon based material by a method comprising the steps
of:
layers;
(i) providing a silicon material having first and second
(ii) etching a central collet portion in the second layer;
(iii) securing a third layer on the second layer;
(iv) etching a first balance spring having a first collet
portion in the first layer of silicon-based material so that the
first collet portion is coaxially mounted on the central collet
portion; and
(v) etching a second balance spring having a second
collet portion in the third layer of silicon-based material so that
the second collet portion is coaxial with the central collet
portion, thereby forming the one-piece double balance spring,
wherein the first collet portion, the second collet portion and the
central collet portion form a single collet, wherein the central
collet portion is a spacing means defining a space between the
first balance spring and the second balance spring.
Appeal Br. 18, Claims App.
REJECTIONS
I. Claims 1-7, 9-12, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Beguin (US 3,599,423, issued Aug. 17,
1971) and Conus (US 2006/0055097 Al, published Mar. 16, 2006).
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beguin, Conus, and Bourgeois (US 7,077,562 B2, issued
July 18, 2006).
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Application 12/408,130
ANALYSIS
Rejection I
Independent claim 1 recites "[a] one-piece double balance spring" that
is made by a specific process. See Appeal Br. 18, Claims App. The
Examiner finds, and Appellants agree, that claim 1 is a product-by-process
claim. See Non-Final Act. 3 (transmitted Jan. 31, 2013); Appeal Br. 7; see
also Smithkline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed.
Cir. 2006) ("A product-by-process claim is 'one in which the product is
defined at least in part in terms of the method or process by which it is
made.'") (quoting Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
141, 158 n., (1989)). The Examiner recognizes that the patentability of a
product does not depend on the method used to produce the produce and if
the claimed product is the same as a product disclosed in the prior art, the
claim is unpatentable. Non-Final Act. 3--4.
The Examiner finds that Beguin discloses a one-piece double balance
spring, with each spring connected to a common collet. Non-Final Act. 2
(referencing Beguin's Fig. 3). As the Examiner explains, Beguin discloses
that collets 11 and 12 may be formed as a single collet, such that a central
portion of the collet provides spacing between the two springs. Id. at 3. The
Examiner further finds that, although Beguin fails to disclose that its double
balance spring is made from a silicon material, Conus discloses a spring
manufactured from a silicon material. Id. The Examiner determines that it
would have been obvious to modify Beguin to make the double balance
spring from a silicon material given the versatile material properties for
silicon. Id.
The Examiner also finds that Beguin's disclosed double balance
spring is "one-piece." Non-Final Act. 2. In construing the term "one-
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Appeal2014-000106
Application 12/408,130
piece," the Examiner determines that the term "does not preclude a device
composed of multiple components joined together to form a single
component." Answer 6. As the Examiner explains, this claim construction
is consistent with claim 1 and the Specification, where layers are secured to
one another to form the one-piece double balance spring-that is, the
method of claim 1 expressly recites assembling the one-piece double balance
spring by securing s third layer to the first two layers. Id. at 6-7; see Appeal
Br. 18, Claims App. (reciting the process step "(iii) securing a third layer on
the second layer").
Appellants argue that the Examiner's construction of the term "one-
piece" to encompass Beguin's assembly of parts is unreasonably broad and
ignores the Specification. Appeal Br. 11; Reply Br. 3--4. As Appellants
explain, "[t]he [S]pecification states that this 'one-piece double balance
spring' is 'formed in a single piece,' and gives more than sufficient detail so
that one of ordinary skill in the art would understand that the 'one-piece
double balance spring' is indeed, one-piece, and not an assembly." Reply
Br. 4. In contrast, Beguin's double balance spring is made of three
separately-manufactured pieces that are then joined or assembled. Appeal
Br. 11.
Appellants' argument is persuasive of Examiner error, as the
Examiner has too broadly construed "one-piece" to encompass Beguin's
assembled double balance spring. "[C]laims under examination before the
PTO are given their broadest reasonable interpretation consistent with the
specification." In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed.
Cir. 2012). In reaching our decision, we determine that the securing step of
claim 1 (step (iii}--see Appeal Br. 18, Claims App.) requires securing a
third layer of silicon material onto the second layer using a process such as
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Application 12/408,130
silicon fusion bonding to form a very high level of adherence between the
central collet portion and third layer during the manufacturing process of the
two balance springs and associated collet. See Spec. 5:22-28. This type of
bonding allows the two springs and associated collet portions to be formed
together as a single piece during manufacturing, rather than being formed
individually, then joined or assembled. See Spec. 8: 19-23 ("[T]here are no
longer any assembly problems, since assembly is performed directly during
manufacture of double balance spring 21. The latter includes a first balance
spring 23 and a second balance spring 25, which are joined coaxially to each
other by a single collet 27."). That is, bonding the silicon layers together
and forming the springs and collet in the layers during manufacture results in
a double spring balance that is a single piece or "one-piece."
The recitation of "one-piece" in claim 1 in conjunction with the
securing step limits the claimed product to a double balance spring formed
where the securing step is a process, such as silicon fusion bonding, which
secures the central collet portion with a very high level of adherence to the
bottom face of a third layer of silicon material to allow the manufacturing of
the double balance spring as a single piece. In contrast, the Examiner's
construction interprets the securing step to encompass securing processes
that do not result in a unitary product, which is inconsistent with the
Specification when read in conjunction with the claim term "one-piece."
See Answer 6-7.
For the reasons above, we do not sustain the Examiner's rejection of
independent claim 1under35 U.S.C. § 103(a) as being unpatentable over
Beguin and Conus. We also do not sustain the Examiner's rejection of
claims 2-7, 9-12, and 21, which depend directly from claim 1, under 35
U.S.C. § 103(a) as being unpatentable over Beguin and Conus.
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Application 12/408,130
Rejection II
In rejecting claim 8, the Examiner relies on the finding that Beguin
discloses a one-piece double balance spring. Non-Final Act. 5. As
discussed above in connection with our analysis of Rejection I, this finding
is deficient. Further, the Examiner does not make any findings that
Bourgeois remedies this deficiency. Accordingly, we do not sustain the
Examiner's rejection of claim 8 under 35 U.S.C. § 103(a) as being
unpatentable over Beguin, Conus, and Bourgeois.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1-12 and 21.
REVERSED
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