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 .
Response to Arguments
Applicant's arguments filed 20 May 2026 have been fully considered but they are not persuasive. Applicant argues that Hannay fails to disclose the added limitations in instant independent claim 1, being: “wherein the substrate includes an insulating resin film that is a base layer on or above which the resistor and the electrode is formed,” and, allegedly, that the adhesive coating (7) of Hannay is an adhesive layer for forming element (4), and not a base layer for forming element (4). The Examiner respectfully disagrees. Fig. 2 of Hannay clearly discloses all of the structural elements of instant independent claim 1, wherein the adhesive insulating resin film substrate/coating (7) is a base layer on or above which the resistor and the electrode are formed, meeting the newly recited spatial limitations, as shown partially reproduced below, which has been annotated by the Examiner.
[AltContent: arrow][AltContent: rect][AltContent: textbox (resistor (4) and electrode situated on top/above flexible resin insulating substrate film/layer (7))][AltContent: textbox (flexible resin insulating substrate film/layer (7) that is a base layer on or above which the resistor (4) and the electrode are formed)][AltContent: arrow]
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It appears that Applicant is attempting differentiate the structural elements and their spatial relationships of the strain gauge disclosed by Hannay by emphasizing the product-by-process limitations recited in claimed invention, such as “formed.” Instant independent claim 1 is a device/apparatus claim, not a method/process of making (i.e. forming/formed) a strain gauge, and, as such, any product-by-process limitations have little to no patentable weight. As such, prior art rejection employing Hannay is maintained.
Applicant then argues that instant independent claim 12 requires an actual electrical connection state in which the layer is electrically coupled to a reference potential and thus defines a structural and electrical relationship that should be given patentable weight. The Examiner respectfully disagrees for two reasons. First, the claimed reference potential is not part structural components of the claimed strain gauge apparatus/device. The instant filed specification clearly states: “The conductive layer 50 is preferably electrically coupled to a reference potential (GND),” thus the reference potential is related to an implementation/application of the strain gauge/apparatus, or an intended use/employment, which is not a structural element of the strain gauge apparatus/device. The claimed strain gauge apparatus/device is not a system, which includes aspects of how the strain gauge is to be employed and/or connected to other elements. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art reference. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). As such, the intended use/employment of a reference potential does not differentiate from the structure of the strain gauge disclosed by the Kieffer et al. reference. Second, the Applicant failed to address the statements made by the Examiner in the prior art rejection regarding that Kieffer et al. disclose in paras 0022-0023 that conductive layer (20) is an antistatic layer, which provides the advantage of easing the sorting as vibrating bowls can be used in the manufacturing process, and the antistatic conductive layer (20) prevents individual strain gauges (10) from sticking together in the manufacturing process, thus, to remove the static charge, the antistatic conductive layer of the strain gauges must inherently be in contact/connected to a reference potential during the manufacturing process to remove/eliminate the static charge, typically to ground. As such, Kieffer et al. clearly disclose a system including a strain gauge capable of being coupled to a reference potential/ground. As such, the rejection of claim 12 under Kieffer et al. is maintained.
Applicant then argues the rejection of instant independent claim 13 under Kieffer et al. regarding the recited thickness of the conductive layer is greater than or equal to 0.1 µm and less than or equal to 5 µm enables noise reduction and suppress cracking during film formation as stated in the instant filed specification, and thus, allegedly, the recited claim thickness of the conductive layer is not an optimum or workable range. The Examiner respectfully disagrees for at least two reasons. First, the alleged aspects of noise reduction and cracking during film formation are not recited in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Second, the Applicant failed to address any of the statements made by the Examiner in regards to one of ordinary skill in the art as of the effective filing date to obviously find workable or optimum ranges of thickness of the conductive layer, such as overall flexibility of the strain gauge. In addition, Kieffer et al. do not place any thickness limitations on the conductive layer, and, as such, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the instant invention to employ any desired thickness of conductive layer, as long as it provides the sufficient amount of conductive material to provide the antistatic properties desired (see Kieffer et al. paras 0022-0023). In addition, Kieffer et al. disclose all the elements of instant independent claim 13 except for the thickness values recited. It would have been obvious to one having ordinary skill in the art as of the effective filing date of the instant invention to employ the thickness values/range being greater than or equal to 0.1 µm and less than or equal to 5 µm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233 (CCPA 1955). In the instant case, the overall flexibility of the strain gauge disclosed by Kieffer et al., which includes the conductive layer and its associated thickness, must be chosen by one of ordinary skill in the art, since the chosen thickness will affect the overall flexibility of the strain gauge to accurately measure the strain in the object to which it is mounted to, and have the strains of the object be accurately measured by the resistor, the strains being transmitted from the object under test, through the strain gauge layers, up to the resistor. If the conductive layer is too thick, it might not be flexible enough to transmit the strain from the object to be measured to the resistor, through the strain gauge. As such, through basic routine experimentation one of ordinary skill in the art as of the effective filing date would choose the recited thickness range recited in instant independent claim 13, or any other desired range, as long as the required and necessary overall flexibility of the strain gauge package provides accurate measurement of strain of the object to which it is to be mounted, or for any other reasons, such as being related to the manufacturing process of the strain gauge, thus meeting all the remaining limitations recited in instant independent claim 13. As such the prior art rejection is maintained.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 3,315,200 to Hannay and JP 2018132531 A to Misaizu et al. Hannay discloses a strain gauge (see entire reference) including a flexible resin substrate (7) (note: all materials are inherently flexible to some finite degree and the substrate (7) must be flexible to transmit strain to the resistor (4), see col. 1, line 30, and lines 62-65 of Hannay) the flexible substrate being an insulating adhesive coating/film (note: resins, such as epoxy, urethane, UV and polyester resins, are known adhesives, especially when formulated for bonding and non-conductive/insulating); a resistor (4) being situated on one side of the substrate; a conductive layer (5) formed on the other side of the substrate and an electrode (two ends of resistor (4) in the bottom right of Fig. 1) inherently configured to externally output a change in a resistance value of the resistor in accordance with strain; further including an insulating/nonconducting layer/film (3) formed of an inorganic material (aluminum oxide) being situated on the other side of the substrate; wherein the conductive layer (5) is laminated on an opposite side of the insulating layer from the substrate, and wherein the insulating resin substrate film is a base layer on or above which the resistor and the electrode are formed, meeting a majority of the limitations recited in independent claim 1. Hannay et al. do not explicitly disclose that the resistor is formed of a material including at least one of Cr or nickel. Misaizu et al. disclose a strain gauge (1) (see entire reference and cited English translation) including a resistor material including Cr (chromium) or Ni (nickel) or CrN, formed on flexible base made of resin. It would have been obvious to one having ordinary skill in the art as of the effective filing date of the instant invention to modify the resistor material of the strain gauge disclosed by Hannay, employing and a resistor material including Cr, Ni or CrN, as taught by Misaizu et al., thus having a strain sensor achieving high sensitivity (500% or more compared to conventional strain gauges, and achieving a small size (1/10 less or compared with conventional technology), thus meeting all remaining limitations recited in instant independent claim 1.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2004/0159162 to Kieffer et al. Kieffer et al. disclose a strain gauge (10) (see entire reference) including a flexible (note: the term “semi-rigid” employed by Kieffer et al. is broadly defined as: “stiff and solid, but not inflexible,” thus inherently “flexible” to some degree, and the instant filed disclosure does not place any limitations in regards to the claim limitation of “flexible,” that is, degree of flexibility or specific material properties, as well as the fact to induce strain in the strain gauge, there must be a finite amount of flexibility of the substrate under strain, thus inducing changes in length of the resistor formed thereon) reinforced epoxy, fiber glass, glass, polyimide resin substrate (12); a resistor (16) formed of a material including at least one of Cr or nickel (see para 0001), the resistor being situated on one side of the substrate (see Fig. 1); a conductive layer/anti-static layer of copper or solder or other low resistance material (20) formed on the other side of the substrate; and an electrode (18A, 18B) configured to externally output a change in resistance value of the resistor in accordance with strain, thus meeting the majority of limitations recited in instant independent claim 12. Kieffer et al. do not explicitly state that the conductive layer is electrically coupled to a reference potential, as recited in instant independent claim 12. However, instant independent claim 12 is an apparatus/device claim, being a strain gauge, not a system claim, which includes additional aspects or elements regarding connection to other element, such as a reference potential, and, as such, is considered as an intended use limitation, which provide little to no patentable weight in regards to the claimed strain gauge apparatus/device. As such, the conductive layer (20) of the strain gauge apparatus/device disclosed by Kieffer et al. inherently is capable of the intended use limitations of being electrically coupled/connect to a reference potential, thus meeting the remaining limitations of instant independent claim 12. Furthermore, Kieffer et al. further disclose in paras 0022-0023 that the conductive layer (20) is an antistatic layer, which provides the advantage of easing the sorting as vibrating bowls can be used in the manufacturing process, and the antistatic conductive layer (20) prevents individual strain gauges (10) from sticking together in the manufacturing process, thus, to remove the static charge, the antistatic conductive layer of the strain gauges must inherently be in contact/connected to a reference potential during the manufacturing process to remove/eliminate the static charge, typically to ground.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2004/0159162 to Kieffer et al. Kieffer et al. disclose a strain gauge (10) (see entire reference) including a flexible (note: the term “semi-rigid” employed by Kieffer et al. is broadly defined as: “stiff and solid, but not inflexible,” thus inherently “flexible” to some degree, and the instant filed disclosure does not place any limitations in regards to the claim limitation of “flexible,” that is, degree of flexibility or specific material properties, as well as the fact to induce strain in the strain gauge, there must be a finite amount of flexibility of the substrate under strain, thus inducing changes in length of the resistor formed thereon) reinforced epoxy, fiber glass, glass, polyimide resin substrate (12); a resistor (16) formed of a material including at least one of Cr or nickel (see para 0001), the resistor being situated on one side of the substrate (see Fig. 1); a conductive layer/anti-static layer of copper or solder or other low resistance material (20) formed on the other side of the substrate; and an electrode (18A, 18B) configured to externally output a change in resistance value of the resistor in accordance with strain, thus meeting the majority of limitations recited in instant independent claim 13. Kieffer et al. do not explicitly disclose the thickness of the conductive layer (20) is greater than or equal to 0.1 µm and less than or equal to 5 µm, as recited in instant dependent claim 13. However, Kieffer et al. also do not place any thickness limitations on the conductive layer, and, as such, it would have been obvious to one having ordinary skill in the art as of the effective filing date of the instant invention to employ any desired thickness of conductive layer, as long as it provides the sufficient amount of conductive material to provide the antistatic properties desired (see Kieffer et al. paras 0022-0023). In addition, Kieffer et al. disclose all the elements of instant independent claim 13 except for the thickness values recited. It would have been obvious to one having ordinary skill in the art as of the effective filing date of the instant invention to employ the thickness values/range being greater than or equal to 0.1 µm and less than or equal to 5 µm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233 (CCPA 1955). In the instant case, the overall flexibility of the strain gauge disclosed by Kieffer et al., which includes the conductive layer and its associated thickness, must be chosen by one of ordinary skill in the art, since the chosen thickness will affect the overall flexibility of the strain gauge to accurately measure the strain in the object to which it is mounted to, and have the strains of the object be accurately measured by the resistor, the strains being transmitted from the object under test, through the strain gauge layers, up to the resistor. If the conductive layer is too thick, it might not be flexible enough to transmit the strain from the object to be measured to the resistor, through the strain gauge. As such, through basic routine experimentation one of ordinary skill in the art as of the effective filing date would choose the recited thickness range recited in instant independent claim 13, or any other desired range, as long as the required and necessary overall flexibility of the strain gauge package provides accurate measurement of strain of the object to which it is to be mounted, thus meeting all the remaining limitations recited in instant independent claim 13.
Allowable Subject Matter
Claim 14 is allowed over the prior art of record.
Claims 9-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner John Fitzgerald whose telephone number is (571) 272-2843. The examiner can normally be reached on Monday-Friday from 7:00 AM to 3:30 PM E.S.T. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor John Breene, can be reached at telephone number (571) 272-4107. 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. The central 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.
/JOHN FITZGERALD/Primary Examiner, Art Unit 2855
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