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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 13 November 2025 has been entered.
Response to Arguments
Applicant's arguments filed 13 November 2025 have been fully considered but they are not persuasive in regards to amended instant independent claim 1. Applicant argues that that the Hannay reference element 7, being an adhesive coating being formed of a film is not a substrate, and thus does not teach an insulating layer situated on the other side of the substrate. The Examiner respectfully disagrees. The broadest definition of the term “substrate” is: an underlying substance or layer. The instant filed specification states that the substrate is formed of a film, which is now recited in amended instant independent claim 1. The broadest definition of the term “film” is: “a thin covering or coating.” As such, the Hannay reference element 7 clearly reads on the recited limitation of “substrate.” In addition to the above, the amended limitations of “formed of a film” is a product-by-process limitation, and has little to no patentable weight in a device/apparatus claim.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “reference potential” to which the “conducive layers” is “electrically coupled” recited in instant independent claim 12 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 adhesive coating/film (note: resins, such as epoxy, urethane, UV and polyester resins, are known adhesives, especially when formulated for bonding); 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, 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner.
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