DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 25, 2025 has been entered.
Response to Arguments
Claims 1, 2, 7, 9, 12, and 17-19 stand rejected under Section 102 in view of Hughes. Claim 10 stands rejected under Section 102 or in the alternative under Section 103 in view of Hughes. Claims 1, 9, 17, and 18 stand rejected under Section 102 or in the alternative under Section 103 in view of Radjy. Claims 3-6 and 8 stand rejected under Section 103 in view of Hughes and Tsukagoshi. Claim 11 stands rejected under Section 103 in view of Radjy. Claims 15 and 16 stand rejected under Section 103 in view of Hughes and Humbert. Claim 20 stands allowed. Claims 13 and 14 were previously canceled.
Applicants amended claim 1 and added new claim 21. Applicants argue that the application is in condition for allowance.
Regarding the Section 102 and Section 103 rejections: Applicants’ amendment to claim 1, from which all other claims except claim 20 depend, requires the cover layer to contact the substrate. Applicants’ disclosure does not define “contact”, so “contact” could be interpreted as both “contact directly” and “contact indirectly”. Furthermore, the cover layer could also be interpreted as the top piece and separate lateral pieces, as described in the rejection that relies upon Radjy. For purposes of examination, two sets of rejections are provided, (1) one set based on an interpretation that “contact” requires “direct contact”, and in which additional elements besides the top pieces in Hughes and Radjy are considered to be a part of the cover layer, and (2) another set of rejections based on an interpretation that “contact” includes “indirect contact”, in which case the cover layer is interpreted as the top pieces in Hughes and Radjy. The Office notes applicants’ argument relating to whether the Radjy support (2722) directly contacts the PCB portion of sensor component (2730). However, from the disclosure and drawings, it appears that support (2722) is inserted in lower portion (2705), see Radjy Figures 27A and 27B, and thus directly contacts the substrate/PCB. See Radjy specification ¶¶ 157-163. Radjy describes the purpose of support (2722) as being able to maintain a predetermined distance between waterproof layer (2715) and sensor component (2730), which comprises the substrate/PCB. In order to maintain the predetermined distance, support (2722) must contact the substrate/PCB, and because there are not other items between support (2722) and the substrate/PCB, the contact is direct contact. For these reasons, applicants’ arguments on this point are not persuasive.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 7, 9, 12, 17-19, and 21 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Hughes, U.S. Pat. No. 6,326,228.
PNG
media_image1.png
439
668
media_image1.png
Greyscale
For direct contact between the substrate and the cover layer: Cover layer is defined as filter (22 or 61) and adhesive (22).
Regarding claim 1: Hughes discloses a sensor device (10 or 60), comprising: a substrate (11); a sensing layer (14) formed over the substrate (11); and a cover layer (22 or 61, plus adhesive 21) at least partially covering the sensing layer (14) and protecting the sensing layer (14), the cover layer (22 or 61, plus 21) is partially on the substrate (11), the cover layer (22 or 61, plus 21) contacts the substrate (11) and forms a cavity (31 or 62) at least partially around the sensing layer (14) without contacting the sensing layer (14), the cover layer (22 or 61, plus 21) is a porous material (61 or 22, plus 21) or has a plurality of openings (26, 27, 28, 29 in cover layer (22)/adhesive (21)). Hughes specification, col. 1, l. 46 – col. 6, l. 55. Claim 1 includes a requirement that the cover layer be formed partially on the substrate. However, the process limitation of how a layer is formed has no patentable weight in claims drawn to structure. Note that a product-by-process claim is directed to the product per se, not the process by which the product is made. In re Hirao, 190 USPQ 15 at 17 n. 3 (CCPA 1976). See also In re Brown, 173 USPQ 685, 688 (CCPA 1972); In re Luck, 177 USPQ 523, 525 (CCPA 1973); In re Fessman, 180 USPQ 324, 325-26 (CCPA 1974); In re Avery, 186 USPQ 161, 166-67 (CCPA 1975); In re Wertheim, 191 USPQ 90, 103 (CCPA 1976); and In re Marosi, 218 USPQ 289, 292-93 (Fed. Cir. 1983), all of which make it clear that it is the patentability of the final product per se which must be determined in a product-by-process claim, and not the patentability of the process, and that an old or obvious product by a new method is not patentable as a product, whether claimed in product-by-process claims or not. Note that the applicant has the burden of proof in such cases, according to case law.
Regarding claim 2, which depends from claim 1: Hughes discloses a plurality of sensing electrodes (15, 16) formed on or over the sensing layer (14). Id. col. 2, ll. 59-65.
Regarding claim 7, which depends from claim 1: Hughes discloses that the cover layer (22 or 61, plus adhesive (21)) is a porous ceramic material. Id. col. 3, ll. 53-63.
Regarding claim 9, which depends from claim 1: Hughes discloses the cover layer (22, plus adhesive (21)) is a non-porous material having the plurality of openings (26, 27, 28, 29). Id. col. 3, ll. 25-58; col. 4, ll. 30-60.
Regarding claim 12, which depends from claim 1: Hughes discloses the cover layer (22, plus adhesive (21)) has a thickness of 100 nm to 10000 µm. Id. col. 5, ll. 1-6 (100-500 µm).
Regarding claim 17, which depends from claim 1: Hughes discloses that the substrate (11) is a semiconductor bulk substrate or a semiconductor microcircuit. Id. col. 1, ll. 46-53.
Regarding claim 18, which depends from claim 1: Hughes discloses that the sensor device senses temperature, pressure, relative humidity, absolute humidity, or a combination thereof. Id. col. 7, ll. 1-15.
Regarding claim 19, which depends from claim 2: Hughes discloses a sensing circuit measuring at least one of an electrical resistance of the sensing layer (14), an electrical conductivity of the sensing layer (14), an impedance of the sensing layer, a capacitance of a capacitor formed by the sensing electrodes and the sensing layer, and a current flowing through the sensing layer (14). Id. col. 2, ll. 12-27.
For indirect contact between the cover layer and the substrate: Cover layer is defined as filter (22 or 61).
Regarding claim 1: Hughes discloses a sensor device (10 or 60), comprising: a substrate (11); a sensing layer (14) formed over the substrate (11); and a cover layer (22 or 61) at least partially covering the sensing layer (14) and protecting the sensing layer (14), the cover layer (22 or 61) is partially on the substrate (11), the cover layer (22 or 61) contacts the substrate (11) and forms a cavity (31 or 62) at least partially around the sensing layer (14) without contacting the sensing layer (14), the cover layer (22 or 61) is a porous material (61 or 22) or has a plurality of openings (26, 27, 28, 29 in cover layer (22)). Hughes specification, col. 1, l. 46 – col. 6, l. 55. Claim 1 includes a requirement that the cover layer be formed partially on the substrate. However, the process limitation of how a layer is formed has no patentable weight in claims drawn to structure. Note that a product-by-process claim is directed to the product per se, not the process by which the product is made. In re Hirao, 190 USPQ 15 at 17 n. 3 (CCPA 1976). See also In re Brown, 173 USPQ 685, 688 (CCPA 1972); In re Luck, 177 USPQ 523, 525 (CCPA 1973); In re Fessman, 180 USPQ 324, 325-26 (CCPA 1974); In re Avery, 186 USPQ 161, 166-67 (CCPA 1975); In re Wertheim, 191 USPQ 90, 103 (CCPA 1976); and In re Marosi, 218 USPQ 289, 292-93 (Fed. Cir. 1983), all of which make it clear that it is the patentability of the final product per se which must be determined in a product-by-process claim, and not the patentability of the process, and that an old or obvious product by a new method is not patentable as a product, whether claimed in product-by-process claims or not. Note that the applicant has the burden of proof in such cases, according to case law.
Regarding claim 2, which depends from claim 1: Hughes discloses a plurality of sensing electrodes (15, 16) formed on or over the sensing layer (14). Id. col. 2, ll. 59-65.
Regarding claim 7, which depends from claim 1: Hughes discloses that the cover layer (22 or 61) is a porous ceramic material. Id. col. 3, ll. 53-63.
Regarding claim 9, which depends from claim 1: Hughes discloses the cover layer (22) is a non-porous material having the plurality of openings (26, 27, 28, 29). Id. col. 3, ll. 25-58; col. 4, ll. 30-60.
Regarding claim 12, which depends from claim 1: Hughes discloses the cover layer (22) has a thickness of 100 nm to 10000 µm. Id. col. 5, ll. 1-6 (100-500 µm).
Regarding claim 17, which depends from claim 1: Hughes discloses that the substrate (11) is a semiconductor bulk substrate or a semiconductor microcircuit. Id. col. 1, ll. 46-53.
Regarding claim 18, which depends from claim 1: Hughes discloses that the sensor device senses temperature, pressure, relative humidity, absolute humidity, or a combination thereof. Id. col. 7, ll. 1-15.
Regarding claim 19, which depends from claim 2: Hughes discloses a sensing circuit measuring at least one of an electrical resistance of the sensing layer (14), an electrical conductivity of the sensing layer (14), an impedance of the sensing layer, a capacitance of a capacitor formed by the sensing electrodes and the sensing layer, and a current flowing through the sensing layer (14). Id. col. 2, ll. 12-27.
Regarding claim 21, which depends from claim 1: Hughes discloses that the cover layer (22 or 61) is monolithically formed in a single piece. See id. col. 3, ll. 53-62.
Claim 10 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hughes.
Regarding claim 10, which depends from claim 9: Hughes discloses the openings (26, 27, 28, 29) have an average diameter on the order of angstroms to microns, id. col. 4, ll. 42-45, which overlaps the requirement of 5 nm to 200 µm. MPEP § 2131.03(II). In the alternative, Hughes discloses an obvious variant of claim 10. MPEP § 2144.05(I).
Claims 1, 9, 17, 18, and 21 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by or, in the alternative, obvious in view of Radjy, U.S. Pat. Pub. No. 2018/0340925, Figures 27A-27C and 2.
PNG
media_image2.png
344
354
media_image2.png
Greyscale
PNG
media_image3.png
597
355
media_image3.png
Greyscale
PNG
media_image4.png
641
681
media_image4.png
Greyscale
Direct contact: Radjy’s defined cover layer is support (2722), waterproof layer (2715), and upper portion (2707). When cover layer (2722, 2715, 2707) contacts substrate (PCB portion of sensor component (2730)), cover layer (2722, 2715, 2707) is in direct contact.
Regarding claim 1: Radjy Figures 27A-27C in view of Radjy Figure 2 disclose a sensor device, comprising: a substrate (PCB of sensor component (2730)); a sensing layer (sensor portion (humidity sensor (255) shown in Rajdy Figure 2) of sensor component (2730)) formed over the substrate; and a cover layer (2722, 2715, 2707) at least partially covering the sensing layer and protecting the sensing layer, the cover layer (2722, 2715, 2707) is partially on the substrate (PCB of sensor component (2730)), the cover layer (2722, 2715, 2707) contacts the substrate and forms a cavity at least partially around the sensing layer without contacting the sensing layer, the cover layer (2722, 2715, 2707) is a porous material or has a plurality of openings (2709). Radjy specification ¶¶ 157-163, 81-83. To the extent that Radjy Figures 27A-27C do not incorporate by reference Radjy Figure 2, one having ordinary skill in the art at a time before the effective filing date would be motivated to modify Radjy Figures 27A-27C to include the Radjy Figure 2 PCB 240, humidity sensor 255, and elements 248 and transceiver 249 because the modification would have involved the substitution of an equivalent known for the same purpose. Claim 1 includes a requirement that the cover layer be formed partially on the substrate. However, the process limitation of how a layer is formed has no patentable weight in claims drawn to structure. Note that a product-by-process claim is directed to the product per se, not the process by which the product is made. In re Hirao, 190 USPQ 15 at 17 n. 3 (CCPA 1976). See also In re Brown, 173 USPQ 685, 688 (CCPA 1972); In re Luck, 177 USPQ 523, 525 (CCPA 1973); In re Fessman, 180 USPQ 324, 325-26 (CCPA 1974); In re Avery, 186 USPQ 161, 166-67 (CCPA 1975); In re Wertheim, 191 USPQ 90, 103 (CCPA 1976); and In re Marosi, 218 USPQ 289, 292-93 (Fed. Cir. 1983), all of which make it clear that it is the patentability of the final product per se which must be determined in a product-by-process claim, and not the patentability of the process, and that an old or obvious product by a new method is not patentable as a product, whether claimed in product-by-process claims or not. Note that the applicant has the burden of proof in such cases, according to case law.
Regarding claim 9, which depends from claim 1: Radjy discloses the cover layer (portion (2707) of cover layer (2722, 2715, 2707)) is a non-porous material having the plurality of openings (2709). See id. ¶¶ 157-159.
Regarding claim 17, which depends from claim 1: Radjy discloses the substrate is a semiconductor bulk substrate or a semiconductor microcircuit. See id. ¶ 161 (PCB).
Regarding claim 18, which depends from claim 1: Radjy discloses the sensor device senses temperature, pressure, relative humidity, absolute humidity, or a combination thereof. See id.
Indirect contact: Cover layer is upper portion (2707). Contact is made with the substrate indirectly through support (2722) and waterproof layer (2715).
Regarding claim 1: Radjy Figures 27A-27C in view of Radjy Figure 2 disclose a sensor device, comprising: a substrate (PCB of sensor component (2730)); a sensing layer (sensor portion (humidity sensor (255) shown in Rajdy Figure 2) of sensor component (2730)) formed over the substrate; and a cover layer (2707) at least partially covering the sensing layer and protecting the sensing layer, the cover layer (2707) is partially on the substrate (PCB of sensor component (2730)), the cover layer (2707) contacts the substrate and forms a cavity at least partially around the sensing layer without contacting the sensing layer, the cover layer (2707) is a porous material or has a plurality of openings (2709). Radjy specification ¶¶ 157-163, 81-83. To the extent that Radjy Figures 27A-27C do not incorporate by reference Radjy Figure 2, one having ordinary skill in the art at a time before the effective filing date would be motivated to modify Radjy Figures 27A-27C to include the Radjy Figure 2 PCB 240, humidity sensor 255, and elements 248 and transceiver 249 because the modification would have involved the substitution of an equivalent known for the same purpose. Claim 1 includes a requirement that the cover layer be formed partially on the substrate. However, the process limitation of how a layer is formed has no patentable weight in claims drawn to structure. Note that a product-by-process claim is directed to the product per se, not the process by which the product is made. In re Hirao, 190 USPQ 15 at 17 n. 3 (CCPA 1976). See also In re Brown, 173 USPQ 685, 688 (CCPA 1972); In re Luck, 177 USPQ 523, 525 (CCPA 1973); In re Fessman, 180 USPQ 324, 325-26 (CCPA 1974); In re Avery, 186 USPQ 161, 166-67 (CCPA 1975); In re Wertheim, 191 USPQ 90, 103 (CCPA 1976); and In re Marosi, 218 USPQ 289, 292-93 (Fed. Cir. 1983), all of which make it clear that it is the patentability of the final product per se which must be determined in a product-by-process claim, and not the patentability of the process, and that an old or obvious product by a new method is not patentable as a product, whether claimed in product-by-process claims or not. Note that the applicant has the burden of proof in such cases, according to case law.
Regarding claim 9, which depends from claim 1: Radjy discloses the cover layer (2707) is a non-porous material having the plurality of openings (2709). See id. ¶¶ 157-159.
Regarding claim 17, which depends from claim 1: Radjy discloses the substrate is a semiconductor bulk substrate or a semiconductor microcircuit. See id. ¶ 161 (PCB).
Regarding claim 18, which depends from claim 1: Radjy discloses the sensor device senses temperature, pressure, relative humidity, absolute humidity, or a combination thereof. See id.
Regarding claim 21, which depends from claim 1: Radjy discloses that the cover layer (2707) is monolithically formed in a single piece. See id. ¶¶ 157. See also id. ¶¶ 22, 81, 174. To the extent that the disclosures in paragraphs 22, 81, and 174 are not a part of the embodiment, one having ordinary skill in the art at a time before the effective filing date would be motivated to modify Radjy to include these features because the modification would have involved the substitution of an equivalent known for the same purpose.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 3-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Hughes, and further in view of Tsukagoshi, Japanese Pat. Pub. No. S58-165048A.
PNG
media_image5.png
243
262
media_image5.png
Greyscale
Regarding claim 3, which depends from claim 1: Hughes discloses that the its cover layer (22 or 61) can be a porous layer, but does not provide details relating to porosity.
Tsukagoshi, directed to similar subject matter, discloses a cover layer (1) having a porous material, the porous material having a porosity of more than 5%. Tsukagoshi specification, page 2 (machine translation). One having ordinary skill in the art at a time before the effective filing date would be motivated to modify Hughes to include the Tsukagoshi material because the modification would have involved the substitution of an equivalent known for the same purpose.
Regarding claim 4, which depends from claim 3: Tsukagoshi discloses the porosity is greater than 50%. Id.
Regarding claim 5, which depends from claim 3: Tsukagoshi discloses the porous material has a plurality of pores with an average diameter of 5 nm to 200 µm. Id. (100 µm).
Regarding claim 6, which depends from claim 5: Tsukagoshi discloses that the average diameter is 100 nm to 300 nm. Id. (100 µm).
Regarding claim 8, which depends from claim 1: Hughes discloses that the its cover layer (22 or 61) can be a porous layer, but does not provide details relating to porosity.
Tsukagoshi, directed to similar subject matter, discloses a cover layer (1) that is a porous solid foam material. Id. One having ordinary skill in the art at a time before the effective filing date would be motivated to modify Hughes to include the Tsukagoshi material because the modification would have involved the substitution of an equivalent known for the same purpose.
Claim 11 is are rejected under 35 U.S.C. 103 as being unpatentable over Radjy.
Regarding claim 11, which depends from claim 1: Radjy discloses that the cover layer (2707) has a plurality of openings (2709) and can be formed from a metal material. Radjy specification ¶ 157. Radjy does not specifically state that the openings (2709) have a plurality of sidewalls covered by a metal material. However, if the openings (2709) are formed in the metal cover layer (2707), the openings would have sidewalls that are a metal material. Because the openings have metal sidewalls, there does not appear to be a difference between these types of openings as compared with openings which have sidewalls covered by a metal material. For these reasons, claim 11 is rejected as an obvious variant over the prior art.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hughes, and further in view of Humbert, U.S. Pat. Pub. No. 2011/0185810.
PNG
media_image6.png
842
1388
media_image6.png
Greyscale
Regarding claim 15, which depends from claim 1: Hughes discloses its sensing layer is a humidity sensor, Hughes specification ¶¶ 81-83, but is silent as to the details of the humidity sensor.
Humbert, directed to similar subject matter, discloses the use of an inorganic dielectric layer (202) as a sensing layer in a humidity sensor. Humbert specification ¶¶ 13, 22. One having ordinary skill in the art at a time before the effective filing date would be motivated to modify Hughes to include the Humbert sensing design because the modification would have involved the substitution of an equivalent known for the same purpose.
Regarding claim 16, which depends from claim 15: The combination discloses the inorganic dielectric layer is made of or includes a nitride material. Id. ¶ 13 (silicon nitride).
Allowable Subject Matter
Claim 20 is allowed.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to claim 20: The claim has been found allowable because the prior art of record does not disclose “forming a continuous cover layer partially on the wafer and over each of the sensing layers, the continuous cover layer is a porous material and/or has a plurality of openings; and dicing the wafer to obtain a plurality of intermediate sensor devices each including one of the sensing layers and an individual cover layer formed by dicing the continuous cover layer and forming a cavity around the one sensing layer without contacting the one sensing layer”, in combination with the remaining limitations of the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA KATHLEEN HALL whose telephone number is (571)270-7567. The examiner can normally be reached Monday-Friday, 8 a.m.-5 p.m.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fernando Toledo can be reached at 571-272-1867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Victoria K. Hall/Primary Examiner, Art Unit 2897