Montres Breguet S.A.

Patent Trials and Appeals Board

Sep 18, 2020

15044411 - (D) (P.T.A.B. Sep. 18, 2020)

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.
15/044,411 02/16/2016 Alain ZAUGG 466838US41 7774
22850 7590 09/18/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
WICKLUND, DANIEL PM
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
09/18/2020 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 ALAIN ZAUGG, STEFAN ROMBACH,
DOMINIQUE LECHOT, and JEAN-PHILIPPE ROCHAT

Appeal 2019-005448
Application 15/044,411
Technology Center 2800
____________

Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
DONNA M. PRAISS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 5, and 7–10. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Montres
Breguet S.A. Appeal Br. 1.
Appeal 2019-005448
Application 15/044,411

2
Appellant’s invention is directed to an autonomous chronograph
mechanism comprising its own energy accumulator, its own regulating
system, and a gear train connecting the energy accumulator to the regulating
system (Spec. 1:3–6; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. A chronograph mechanism comprising:
an energy accumulator comprised of a strip-spring;
a regulating system;
a gear train; and
a rack,
wherein the rack has one end arranged to cooperate with
the strip-spring and another end arranged to cooperate with the
gear train,
wherein the rack is arranged to regulate a torque
delivered by the strip-spring,
wherein the rack is mounted to pivot in one direction of
rotation to drive the gear train, and
wherein the rack connects the energy accumulator to the
regulating system.

Appellant appeals the following rejections:
1. Claims 1, 4, 5, 9, and 10 are rejected under 35 U.S.C.
§ 102(a)(1) as unpatentable over Barbasini (CH 706 208 A2,
Sept. 13, 2013 (as translated)).
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Barbasini in view of Feigel (US 2,700,868, Feb. 1,
1955).
3. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Barbasini in view of Jolidon (US 2005/0007888 A1,
Jan. 13, 2005).
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Application 15/044,411

3
Appellant argues the subject matter of claim 1 only (Appeal Br. 3–5).
Appellant’s arguments regarding the § 103 rejections are that the secondary
references, Feigel and Jolidon, do not cure Barbasini’s deficiencies (Appeal
Br. 5–6). Therefore, claims 7 and 8 will stand or fall with our analysis of the
rejection of claim 1 under § 102(a)(1).

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings in the § 102(a)(1) rejection over Barbasini
with respect to claim 1 are located on pages 2 to 3 of the Final Action.
Appellant argues Barbasini does not teach that rack 7 has one end
arranged to cooperate with strip-spring 21 and another end arranged to
cooperate with the gear train (Appeal Br. 4). Appellant contends that
Barbasini clearly distinguishes the auxiliary mechanism driving control
wheel 17from the main mechanism driving chronograph drive wheel 26
(Appeal Br. 4). Appellant argues that Barbasini distinguishes the two
mechanism by disclosing that the drive of control disk mechanism does not
apply to the main cylinder of the movement and the operation and the power
reserve main movement is not affected by control disk mechanism function
(Appeal Br. 4). Appellant argues that Barbasini’s main mechanism is
regulated by the main movement with the module driving wheel 25 through
a gear train which is not described in the Figures of Barbasini (Appeal Br.
4). Appellant argues that Barbasini cannot anticipate the claimed subject
matter because it does not show every feature in as complete detail as
contained in the claim (Appeal Br. 5).
The Examiner responds that claim 1 requires the rake element of the
rack “cooperate with” the gear train (Ans. 3). The Examiner finds Merriam-
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Application 15/044,411

4
Webster’s dictionary defines “cooperate” as “to act or work with another”
(Ans. 4). The Examiner finds that “cooperate” does not require that the
components (i.e., the rack and the gear train) be connected directly with each
other (Ans. 4). The Examiner finds that Barbasini’s rack 7 does not drive
the gear train (i.e., elements 24, 25, 38, and gear train recited in ¶ 50), but
rack 7 does cooperate with this gear train when the auxiliary mechanism
(i.e., regatta “countdown” chronograph mechanism) is in operation via
timing wheel 20 (Ans. 4). The Examiner finds that Barbasini’s auxiliary
mechanism and main mechanism may have separate driving mechanisms,
but they are each regulated by and connected to the same balance type
regulator (Ans. 5). The Examiner finds that Barbasini’s auxiliary
mechanism is only connected to this regulator during its operation via gear
train (i.e., elements 13, 15, 17, and 20) and gear train (elements 24, 25, 38
and gear train recited in ¶ 50) due to the partially toothed timing wheel 20
(Ans. 5). The Examiner finds that Appellant argues limitations not in the
claims (Ans. 6). We agree.
Claim 1 recites, in relevant part, “the rack has one end arranged to
cooperate with the strip-spring and another end arranged to cooperate with
the gear train.” Claim 1 does not recite that the rack directly engages the
gear train as Appellant appears to argue. Appellant contends that
Barbasini’s temporary connections between the rack 7, clutch wheel 24 and
timing wheel 20 do not cooperate with the gear train (i.e., wheels/gears 24,
25, 26) because these various elements do not work together (Reply Br. 4).
Appellant’s argument is not persuasive because Barbasini discloses that the
clutch wheel 24 meshes with timing wheel 20 during countdown mode
(Barbasini ¶¶ 46, 48, 49). In other words, the toothed end 11 of rack 7
Appeal 2019-005448
Application 15/044,411

5
engages with the pinion 13 which is connected to the control wheel 17,
which is integral with the timing wheel 20 that meshes with clutch wheel 24
and the gear train during countdown mode. The subject matter of product
claim 1 is met by the cooperation of rack/lever 7 with the gear train (i.e.,
wheels/gears 24, 25, 26) during countdown mode.
Although Appellant argues the Examiner’s definition of “cooperate,”
Appellant does not direct us to any definition of that term in the
Specification that differs from the Examiner’s definition. Appellant argues
that if A cooperates with B and B cooperates with C, it does not necessarily
follow that A cooperates with C (Reply Br. 4). Appellant’s supposition is
not persuasive here because the Examiner has shown that Barbasini’s rack 7
does work with the gear train (24, 25, 26) when in auxiliary (regatta) mode.
The claims do not require a direct and constant cooperation of the rack with
the gear train as Appellant appears to argue.
We find that the Examiner has established by a preponderance of the
evidence that the selective engagement of the timing wheel 20 with the
clutch wheel 24 and the gear train provides an indirect cooperation of the
rack 7 with the gear train. On this record, we affirm the Examiner’s
§ 102(a)(1) rejection over Barbasini. For the same reasons, we affirm the
Examiner’s § 103 rejections of claim 7 over Barbasini in view of Feigel and
claim 8 over Barbasini in view of Jolidon.

CONCLUSION
In summary:
Appeal 2019-005448
Application 15/044,411

6
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4, 5, 9,
10
102(a)(1) Barbasini 1, 4, 5, 9,
10

7 103 Barbasini, Feigel 7
8 103 Barbasini, Jolidon 8
Overall
Outcome
1, 4, 5, 7–
10

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED