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 .
Election/Restrictions
Claims 34-35 and 39-41 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II and Species B, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 30 June 2026.
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.
Claim(s) 1, 4-6, 8-12 and 36-38 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yi (PG Pub 20120068827).
Considering claim 1, Yi (Figure 1) teaches an acoustic transponder for an acoustic transmission system comprising: transponder chip (3 + paragraph 0049), a piezoelectric element (2 + paragraphs 0048-0049) for converting a carrier frequency into an electric voltage, wherein the transponder has a miniaturized design (paragraphs 0048-0049).
Considering claim 4, Yi teaches wherein the transponder is configured to be completely embedded in a workpiece or wherein the transponder is configured to be acoustically bonded to a surface of a workpiece (abstract).
Considering claim 5, Yi teaches wherein the workpiece is a metallic component and/or a 3D printed part (paragraph 0045).
Considering claim 6, the method of forming a device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight (i.e. by flip-chip technology).
Considering claim 8, Yi (Figure 2) teaches at least two electrodes (21 + 22 + paragraph 0051), the electrodes being formed at least on a bottom side and on a top side of the piezoelectric element (2CS + paragraph 0051).
Considering claim 9, Yi teaches wherein the electrodes are at least partially elastic (paragraph 0051).
Considering claim 10, Yi (Figure 2) teaches wherein the electrode on the top side of the piezoelectric element is formed in a structured manner (21 + paragraph 0051).
Considering claim 11, Yi teaches wherein an electrical impedance between the piezoelectric element and the transponder chip is set by a design of the piezoelectric element and/or the electrode (It has been held that where the structure recited in a reference is the same as the claimed structure, claimed properties and functions are presumed to be inherent (In re Best, 195 USPQ 430, 433)).
Considering claim 12, Yi teaches comprising at least one element for electrical impedance matching (paragraph 0071).
Considering claim 36, Yi teaches the acoustic transmission system comprising on a primary side: a transmitting unit intended and adapted for providing a transmitting signal (paragraph 0048), a receiving unit intended and adapted to received a receiving signal in response to the transmitting signal (paragraphs 0048-0049), an electroacoustic transducer intended and adapted for converting the transmitting signal into an acoustic signal and an acoustic signal into a receiving signal, on a secondary side, a miniaturized transponder wherein the transponder is intended and adapted to receive a receiving signal and transmit a transmitting signal an acoustic coupling medium between the primary side and the secondary side (paragraphs 0048-0049 + It has been held that the recitation that an element is “adapted to” perform a function is not a positive limitation but only requires the ability to so perform, it does not constitute a limitation in any patentable sense).
Considering claim 37, Yi teaches wherein the transponder is adapted and arranged to use the clock of the receiving unit as system clock. (It has been held that the recitation that an element is “adapted to” perform a function is not a positive limitation but only requires the ability to so perform, it does not constitute a limitation in any patentable sense).
Considering claim 38, Yi teaches wherein the receiving unit is adapted to drive a plurality of piezoelectric elements and/or to drive a piezoelectric element which is larger than that of the transponder, and thereby to enlarge the detection range and/or to address a plurality of acoustic transponders (paragraphs 0051-0052) (It has been held that the recitation that an element is “adapted to” perform a function is not a positive limitation but only requires the ability to so perform, it does not constitute a limitation in any patentable sense).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2-3 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yi (PG Pub 20120068827).
Considering claim 2, Yi discloses the claimed invention except for wherein the transponder has a height < 3 mm and/or wherein the transponder has a diameter < 5 mm. It would have been an obvious matter of design choice to have wherein the transponder has a height < 3 mm and/or wherein the transponder has a diameter < 5 mm, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art.
Considering claim 3, Yi discloses the claimed invention except for wherein the piezoelectric element has a height < 300 microns. It would have been an obvious matter of design choice to have wherein the piezoelectric element has a height < 300 microns, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art.
Considering claim 7, Yi discloses the claimed invention except for wherein the height of the piezoelectric material is adjusted such that a thickness resonance is formed in the range of 9 MHz to 14 MHz. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have the height of the piezoelectric material is adjusted such that a thickness resonance is formed in the range of 9 MHz to 14 MHz, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yi (PG Pub 20120068827) and in view of Cassella (PG Pub 20210318178).
Considering claim 13, Yi teaches wherein the transponder as described above.
However, Yi does not teach transponder comprises an inductor for adjusting the impedance and wherein the inductor is connected in parallel to a capacitance of the piezoelectric element.
Cassella (Figure 7A) teaches an inductor (L1 + paragraph 0086) for adjusting the impedance and wherein the inductor is connected in parallel to a capacitance (C1 + paragraph 0086) of the piezoelectric element.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective date to include comprises an inductor for adjusting the impedance and wherein the inductor is connected in parallel to a capacitance of the piezoelectric element into Yi’s device for the benefit of increasing the availability of RFID type devices.
Considering claim 14, Cassella (Figure 7A) teaches wherein the inductor is formed as an SMD component (L1 + paragraph 0086) and wherein the inductor is electrically connected to the piezoelectric element by reflow soldering or by conductive bonding (the method of forming a device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yi (PG Pub 20120068827) and in view of Blot (PG Pub 20120241524).
Considering claim 15, Yi teaches the acoustic transponder as described above.
However, Yi does not teach wherein the acoustic transponder wherein the transponder chip is an NFC chip.
Blot teaches wherein the acoustic transponder wherein the transponder chip is an NFC chip (paragraph 0001).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to include the acoustic transponder wherein the transponder chip is an NFC chip into Yi’s device for the benefit of having contactless chip card.
Claim(s) 16-18 and 20-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yi (PG Pub 20120068827) and in view of Geissler (PG Pub 20170228627).
Considering claim 16, Yi teaches the acoustic transponder as described above.
However, Yi does not teach at least one MEMS sensor.
Geissler teaches at least one MEMS sensor (paragraph 0082).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to include at least one MEMS sensor into Yi’s device for the benefit of gaining information and storing the information.
Considering claim 17, Geissler teaches comprising an identification number for secure authentication (paragraph 0055).
Considering claim 18, Geissler teaches wherein the miniaturization of the acoustic transponder can be used for position determination and at the same time with identification and/or authentication (paragraphs 0055 + 0081).
Considering claim 20, Geissler (Figure 1A) teaches at least one protection element (114 + paragraph 0059) adapted to protect the acoustic transponder from external influences.
Considering claim 21, Geissler (Figure 1A) teaches wherein the at least one protection element comprises a potting compound (116 + paragraph 0060), and wherein the potting compound completely encapsulates a top side of the transponder (paragraphs 0059-0060).
Considering claim 22, Geissler (Figure 1A) teaches wherein the at least one protection element comprises a border (114 + paragraph 0039) along a perimeter of the transponder.
Considering claim 23, Geissler (Figure 1A) teaches wherein a volume in an inner region of the border is filled with a potting compound (116 + paragraph 0060).
Claim(s) 24-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yi (PG Pub 20120068827), in view of Geissler (PG Pub 20170228627) and in view of Alkhabbaz (PG Pub 20200340848).
Considering claim 24, Yi in view of Geissler teaches the at least one protection element a membrane on a bottom side of the transponder as described above.
However, Yi in view of Geissler does not teach wherein the membrane comprises steel.
Alkhabbaz teaches wherein the membrane comprises steel (paragraph 0068).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to include the membrane comprises steel into Yi’s device for the benefit of using a well-known common material providing proper strength as a protection member.
Considering claim 25, Alkhabbaz teaches wherein the border is magnetic and/or wherein the membrane is magnetic (paragraph 0068).
Claim(s) 19 and 26-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yi (PG Pub 20120068827) and in view of Schenk (PG Pub 20200087138).
Considering claim 26, Yi teaches the acoustic transponder as described above.
However, Yi does not teach an intermediate element, the intermediate element being formed between the piezoelectric element and the transponder chip.
Schenk (Figure 19a) teaches an intermediate element (27 + paragraphs 0318-0322).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to include an intermediate element, the intermediate element being formed between the piezoelectric element and the transponder chip into Yi’s device for the benefit of providing electrical connection. Furthermore, substituting in an intermediate layer between the piezoelectric element and the transponder chip would not destroy the device.
Considering claim 27, Schenk (Figure 19a) teaches wherein the intermediate element has a metallized surface for establishing an electrical connection with the piezoelectric element and/or the transponder chip (paragraphs 0318-0322).
Considering claim 28, Schenk (Figure 19a) teaches wherein the metallized surface of the intermediate element is at least partially structured (27 + paragraphs 0318-0322).
Considering claim 29, Schenk (Figure 19a) teaches wherein a bottom side of the intermediate element facing the piezoelectric element has a structure for providing a plurality of parallel electrical contacts (31a + 31b + paragraphs 0318-0322) and/or for minimizing a contact surface between the intermediate element and the piezoelectric element.
Considering claim 30, Schenk (Figure 19a) teaches wherein the intermediate element comprises a molded component and wherein the molded component comprises conductive tracks (paragraphs 0318-0322).
Considering claim 31, Schenk (Figure 19a) teaches wherein a material and/or structure of the intermediate element is formed for vibration decoupling or damping (27 + paragraphs 0318-0322).
Considering claim 32, Schenk teaches wherein the intermediate element is adapted to be thermally insulating (It has been held that the recitation that an element is “adapted to” perform a function is not a positive limitation but only requires the ability to so perform, it does not constitute a limitation in any patentable sense).
Considering claim 33, Schenk teaches wherein a printed circuit board (paragraph 0102) is arranged between the transponder chip and the piezoelectric element for electrical connection between the transponder chip and the piezoelectric element.
Considering claim 19, Schenk teaches wherein the piezoelectric element is made of lead-free material (paragraph 0009).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN P GORDON whose telephone number is (571)272-5394. The examiner can normally be reached M-F 8 a.m. - 4:30 p.m..
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/BRYAN P GORDON/Primary Examiner, Art Unit 2837
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