DETAILED ACTION
Acknowledgements
The present application is being examined under the pre-AIA first to invent provisions.
Claims 1-24 are pending.
This action is Non-Final.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 10’, 12’, 20’ (drawing amendments will be required), 1110, 1609. 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. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 2219, 2230. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Specification
The disclosure is objected to because of the following informalities: The drawing/specification reference elements do not match as presented above.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10, 12, 17, 19-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,226,218 in view of O’Brien et al. (US 7662653) and/or Cros et al. (US 9078563). Specifically, the limitations claimed in the instant claims use slightly different terms, in general form slightly broader scope, and where the difference in the claimed subject matter features are taught by the features in Cros (see Figures 1, 22, 29) and/or O’Brien (see Figures 6, 26, 28). These include features taught in the secondary reference include a second cavity with port, electrical assembly in the cavity, and via across base wafer. It would have been obvious to one of ordinary skill in the art at the time of the invention to combine prior art elements according to known methods to yield predictable results of completing a capacitive type sensor with a cavity gap and electrical connections to allow for wireless communication in order to operate the device as an implantable unit.
Claims 1, 17, 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,638,955 in view of O’Brien et al. (US 7662653) and/or Cros et al. (US 9078563). Specifically, the limitations claimed in the instant claims use slightly different terms, in general form slightly broader scope, and where the difference in the claimed subject matter features are taught by the features in Cros (see Figures 1, 22, 29) and/or O’Brien (see Figures 6, 26, 28). These include features taught in the secondary reference include a second cavity with port, electrical assembly in the cavity, and via across base wafer. It would have been obvious to one of ordinary skill in the art at the time of the invention to combine prior art elements according to known methods to yield predictable results of completing a capacitive type sensor with a cavity gap and electrical connections to allow for wireless communication in order to operate the device as an implantable unit.
Claims 1, 17, 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15, 26 of U.S. Patent No. 11,589,773 in view of O’Brien et al. (US 7662653) and/or Cros et al. (US 9078563). Specifically, the limitations claimed in the instant claims use slightly different terms, in general form slightly broader scope, and where the difference in the claimed subject matter features are taught by the features in Cros (see Figures 1, 22, 29) and/or O’Brien (see Figures 6, 26, 28). These include features taught in the secondary reference include a second cavity with port, electrical assembly in the cavity, and via across base wafer. It would have been obvious to one of ordinary skill in the art at the time of the invention to combine prior art elements according to known methods to yield predictable results of completing a capacitive type sensor with a cavity gap and electrical connections to allow for wireless communication in order to operate the device as an implantable unit.
Claims 1, 17, 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 15, 17 of U.S. Patent No. 12,201,414 in view of O’Brien et al. (US 7662653) and/or Cros et al. (US 9078563). Specifically, the limitations claimed in the instant claims use slightly different terms, in general form slightly broader scope, and where the difference in the claimed subject matter features are taught by the features in Cros (see Figures 1, 22, 29) and/or O’Brien (see Figures 6, 26, 28). These include features taught in the secondary reference include a second cavity with port, electrical assembly in the cavity, and via across base wafer. It would have been obvious to one of ordinary skill in the art at the time of the invention to combine prior art elements according to known methods to yield predictable results of completing a capacitive type sensor with a cavity gap and electrical connections to allow for wireless communication in order to operate the device as an implantable unit.
Claims 1, 17, 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 11, 20 of U.S. Patent No. 12,507,907 in view of O’Brien et al. (US 7662653) and/or Cros et al. (US 9078563). Specifically, the limitations claimed in the instant claims use slightly different terms, in general form slightly broader scope, and where the difference in the claimed subject matter features are taught by the features in Cros (see Figures 1, 22, 29) and/or O’Brien (see Figures 6, 26, 28). These include features taught in the secondary reference include a second cavity with port, electrical assembly in the cavity, and via across base wafer. It would have been obvious to one of ordinary skill in the art at the time of the invention to combine prior art elements according to known methods to yield predictable results of completing a capacitive type sensor with a cavity gap and electrical connections to allow for wireless communication in order to operate the device as an implantable unit.
Claims 1, 17, 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 12 of copending Application No. 19/432286 in view of O’Brien et al. (US 7662653) and/or Cros et al. (US 9078563). Specifically, the limitations claimed in the instant claims use slightly different terms, in general form slightly broader scope, and where the difference in the claimed subject matter features are taught by the features in Cros (see Figures 1, 22, 29) and/or O’Brien (see Figures 6, 26, 28). These include features taught in the secondary reference include a second cavity with port, electrical assembly in the cavity, and via across base wafer. It would have been obvious to one of ordinary skill in the art at the time of the invention to combine prior art elements according to known methods to yield predictable results of completing a capacitive type sensor with a cavity gap and electrical connections to allow for wireless communication in order to operate the device as an implantable unit.
This is a provisional nonstatutory double patenting rejection.
Claim Objections
Claims 13-17 are objected to because of the following informalities: Claim 13 “the electrode pm the lid wafer” appears should read “the electrode on the lid wafer”. Claim 15 limitations are incomplete “wherein the second cavity between comprise a port to allow fluid communication with the first cavity” is suggested to read “wherein the second cavity comprises a port to allow fluid communication with the first cavity”. Claim 17 “the second capacitive plate is positioned on the first surface and” is missing identifiers and should read “the second capacitive plate is positioned on the first surface of the base wafer and”. Appropriate correction is required.
The dependent claims are objected to for depending on an objected claim.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 17-23, the limitations of the capacitive plate including an electrode and a second electrode are rejected for being new matter. Specifically, the limitations of “a capacitive plate positioned on a lid wafer, wherein the lid wafer comprises a first surface, an opposite second surface and an electrode positioned on the second surface (claim 17); wherein the capacitive plate on the second surface of the lid wafer comprises slots or breaks that result in a non-continuous solid area for preventing the formation of eddy currents during use of the sensor (claim 18). wherein the lid wafer comprises a second capacitive plate (claim 23). The issue is that there does not appear to be an embodiment that includes the capacitive plate being different than an electrode, therefore the inclusion of the plate with additional electrodes in claims 17 and 23 is new matter. Claim 18 issue is that the electrode was claimed in claim 17 as being the structure on the claimed second surface further supporting that plate and electrode are one in the same. For these reasons one of skill in the art would not have recognizes applicant was in possession of the claimed invention at the time the invention was effectively filed. The dependent claims are rejected for depending on a rejected claim.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4, 17-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 4, the limitations “wherein a second surface of the lid wafer is accessible from inside the housing” renders the claim indefinite. Claim 1 contains no surface, such that it is unclear how there is a second surface without any other surface being claimed. It is not clear if there is a limitations intended to be included which is missing. This makes the metes and bounds of the claim unclear which renders the claim indefinite.
Regarding claims 17-23, the limitations of the capacitive plate including an electrode and a second electrode render the claims indefinite as being inconsistent with the specification; MPEP 2173.03. Specifically, the limitations of “a capacitive plate positioned on a lid wafer, wherein the lid wafer comprises a first surface, an opposite second surface and an electrode positioned on the second surface (claim 17); wherein the capacitive plate on the second surface of the lid wafer comprises slots or breaks that result in a non-continuous solid area for preventing the formation of eddy currents during use of the sensor (claim 18). wherein the lid wafer comprises a second capacitive plate (claim 23). The issue is that there does not appear to be an embodiment that includes the capacitive plate being different than an electrode, therefore the inclusion of the plate with additional electrodes in claims 17 and 23 is indefinite. Claim 18 issue is that the electrode was claimed in claim 17 as being the structure on the claimed second surface. For these reasons the metes and bounds of the claims are unclear which renders the claims indefinite. The dependent claims are rejected for depending on a rejected claim.
Claim 18 recites the limitation "the formation". There is insufficient antecedent basis for this limitation in the claim.
Further regarding claim 21, the limitations of “wherein the cavity between the lid wafer the base wafer comprise a port to allow fluid communication with the cavity defined by the housing” renders the claim indefinite. It appears to be referring to the same cavity structure twice and is thus a double inclusive limitations and renders the claims indefinite. Likely, the cavity between should be “a second cavity”.
Allowable Subject Matter
Claims 1-10, 12, 24 would be allowed with filing of terminal disclaimers and correction of claim 4 112(b) issues.
Claim 11 is 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.
Claims 13-16 would be allowed with correcting objections.
For each independent claim the collection of structural elements with the arrangements as claimed are not taught, suggested, or made reasonably obvious by the art of record. The closest art is: Cros et al (US 9,078,563) Figure 3 which has electrodes in recessed trenches of wafers, but the wafers do not have a base inside the cavity; Figure 16 is also close, but does not contain two wafers inside the cavity as claimed; Figure 22-23 are very close as well, but the wafer as claimed and related to the other elements of the claim are lacking including positioning in the cavity. Mi et al. (US 8,506,495) teaches a similar sensor in Figure 13, but the structural arrangement of the wafers as claimed is not present. O’Brien et al. (US 7,662,653) teaches a similar wafer design (Figure 22), but does not teach the position in the cavity. Allen et al. (US 6,111,520) teaches a similar wafer structure with electrodes, but does not teach the placement within a cavity of a housing as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R BLOCH whose telephone number is (571)270-3252. The examiner can normally be reached M-F 11-8 EST.
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/MICHAEL R BLOCH/Primary Examiner, Art Unit 3791